JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 March 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark VIVIASEPT – Earlier EU word mark VIBASEPT – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑796/22,
Drinks Prod SRL, established in Păntășești (Romania), represented by I. Speciac and V. Stănese, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Coolike-Regnery GmbH, established in Bensheim (Germany), represented by M. Finke and T. Becker, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg and P. Zilgalvis (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 its action under Article 263 TFEU, the applicant, Drinks Prod SRL, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 September 2022 (Case R 488/2022-5) (‘the contested decision’).
Background to the dispute
2 On 2 November 2020, the applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3 The mark in respect of which registration was sought designated goods in Classes 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
– Class 3: ‘Dishwashing detergents; non-medicated cosmetics and toiletry preparations; bubble bath preparations; cleansers for household purposes; solvents for removing varnishes; toiletries; scented linen water; shaving preparations; spirit gum remover; heliotropin fragrancing compounds; impregnated paper tissues for cleaning dishware; dishwasher detergents; bleaching preparations for laundry use; degreasing preparations with a solvent base; skin care preparations; scouring substances; bleaching preparations; washing liquids; toilet cleaning gels; toilet cleaners; soaps for household use; cloths impregnated with a detergent for cleaning; all-purpose cotton buds for personal use; shaving soap; destainers; hand cleansers; saddle soap; scouring solutions; eyeglass wipes impregnated with a detergent; detergents; natural oils for cleaning purposes; bleaching preparations for household use; degreasing preparations for engines; polishing preparations; drying agents for dishwashing machines; impregnated cloths for polishing; agents for removing wax; impregnated tissues for cleaning [non-medicated, for use on the person]; disposable wipes impregnated with cleansing compounds for use on the face; liquid floor polishes; spray cleaners for use on textiles; lime removers; cleaning sprays; washing-up detergent; floor wax; stain removing benzine; soaps and gels; hand washes; ammonia for cleaning purposes; cleaning solutions for dental ultrasonic sterilization apparatus; colour-removing preparations; sponges impregnated with toiletries; soap powder; spray cleaners for household use; floor wax removers [scouring preparations]; spray polish; drain cleaning preparations; talcum powder; cleaning fluids for camera lenses; skin cleansers; foam detergents; grease-removing preparations; eyeglass lens cleaning solutions; spray cleaners for freshening athletic mouth guards; lavatory cleaning compositions; liquid dishwasher detergents; soap pads; bar soap; cleaning preparations; body washes; hair and body wash; scouring liquids; natural floor polishes; scented fabric refresher sprays; solvents for removing paints; bleaching preparations and other substances for laundry use; degreasing solvents, other than for use in manufacturing processes; varnish-removing preparations; alcoholic solvents being cleaning preparations; caustic cleaning agents; degreasing sprays; washing preparations for personal use; stain removers; window cleaners in spray form; dishwashing liquid; face wipes; oils for cleaning purposes; moist wipes for sanitary and cosmetic purposes; oil of turpentine for degreasing; non-medicated toilet preparations; dishwashing preparations; abrasives; carpet shampoo; tissues impregnated with essential oils, for cosmetic use; scrubbing powder; skin moisturisers; soaps; starch for cleaning purposes; household bleach; shining preparations [polish]; perfuming preparations for the atmosphere; vehicle cleaning preparations; liquid soaps for hands and face; cleaning fluids; cleaning agents for household purposes; lacquer-removing preparations; household detergents; perfumery; laundry additives;’
– Class 5: ‘Hand-sanitizing preparations; antibacterial sprays; medicated talcum powder; germicidal preparations [other than soap]; antibacterial clay preparations; cleansing solutions for medical use; antiseptic body care preparations; sanitising wipes; fungicides; germicides; sterilizing preparations; disinfectants for swimming pools; disinfectants; air sanitizing preparations; antiseptics; sterilising solutions; bactericides; medicated soap; alcohol for pharmaceutical purposes; sanitizing preparations for hospital use; materials for dressings; washes (disinfectant -) [other than soap]; antiseptic cleansers; disinfectants for medical instruments; sanitizing wash for fruit and vegetables; sanitizing wipes; antibacterial wipes; first-aid boxes, filled; disinfectants for veterinary use; disinfectants for medical use; sanitizers for household use; sterilising substances; rubbing alcohol; first aid boxes sold filled; medicated plasters; medicated toiletry preparations; antimicrobial facewashes; wipes for medical use; hand-sanitising preparations; alcohol swabs for medical purposes; washes (sterilizing -); disinfectants impregnated into tissues; disinfectants for medical apparatus and instruments; antibacterial preparations; air deodoriser sprays.’
4 On 10 February 2021, the intervener, Coolike-Regnery GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based, in particular, on the EU word mark VIBASEPT, registered on 12 December 2006 under No 915 003, covering goods in, inter alia, Classes 3 and 5 and corresponding, for each of those classes, to the following description:
– Class 3: ‘Tool and equipment cleaning agent for sanitary facilities and for public hygiene; antiseptic soaps’;
– Class 5: ‘Tool and equipment disinfecting agent for sanitary facilities, disinfectant for humanitarian and veterinary use, fungicides, herbicides’.
6 The grounds relied on in support of the opposition were those 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 28 January 2022, the Opposition Division upheld the opposition on the basis of the existence of a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods concerned.
8 On 25 March 2022, 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 and, accordingly, upheld the opposition, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision in so far as it upholds the appeal brought by the applicant against the decision of the Opposition Division;
– order EUIPO to continue the procedure for registration of the mark applied for in respect of all the goods covered by the application for registration.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by it in the event of a hearing being held.
12 The intervener contends that the Court should dismiss the action.
Law
The Court’s jurisdiction to hear and determine certain of the applicant’s heads of claim
13 In so far as concerns the applicant’s second head of claim, it should be noted that it seeks an order from the Court that EUIPO continue the procedure for registration of the mark applied for.
14 In that regard, it is sufficient to recall, as EUIPO does, that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
15 It follows that the applicant’s second head of claim must be rejected on the ground of lack of jurisdiction.
Admissibility of the evidence adduced for the first time before the General Court
16 EUIPO disputes the admissibility of Annexes A.8, A.11, A.12 and A.15 to the application, in so far as these were not submitted in the course of the administrative proceedings.
17 The purpose of actions brought before the General Court under Article 72(2) of Regulation 2017/1001 is to review the legality of the decisions of the Boards of Appeal. It follows from that provision that facts not submitted by the parties before the departments of EUIPO cannot be submitted at the stage of the appeal brought before that court of the European Union. The General Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of EU law made by that board, particularly in the light of the facts which were submitted to the latter, but it cannot, by contrast, carry out such a review by taking into account matters of fact newly produced before it (see judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraphs 52 and 54 and the case-law cited).
18 In the present case, it should be noted, as EUIPO rightly points out, that the applicant included in the annexes to the application certain evidence which had not been produced before the Board of Appeal and which was submitted for the first time before the Court. In particular, it produced, first, as Annex A.8 to the application, an article from Wikipedia concerning the definition of the English word ‘antiseptic’. Second, it appended, as Annexes A.11 and A.12 to the application, two articles intended to demonstrate the level of understanding of English among the populations of Bulgaria and Poland. Lastly, in order to prove that the earlier mark had a weak distinctive character, it relied on Annex A.15 to the application, which contained a list of goods bearing the sequence of letters corresponding to the term ‘sept’ and coming under the categories concerned in the present case.
19 In that regard, it must be borne in mind that it is not the Court’s function to review the facts in the light of the documents adduced for the first time before it. To allow the examination of such evidence is contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible, without there being any need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
20 Consequently, Annexes A.8, A.11, A.12 and A.15 to the application must be rejected as inadmissible, without it being necessary to assess their probative value.
Substance
21 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It raises, in essence, two complaints concerning, respectively, (i) an error of assessment as regards the distinctive character of the earlier mark and (ii) errors of assessment relating, first, to the comparison of the goods at issue and, second, to the similarity found in the comparison of the opposing signs.
22 EUIPO and the intervener contend that the Board of Appeal correctly found that there was a likelihood of confusion in the present case.
23 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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, pursuant to Article 8(2)(a)(iv) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union, with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
24 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).
25 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).
26 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
27 It is in the light of those principles that the present action must be examined.
The relevant public
28 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
29 In the present case, the Board of Appeal found, in essence, that the relevant territory and public were those of the European Union. Next, for the purposes of the present analysis, it decided to take into account the Bulgarian- and Polish-speaking part of the public consisting of both the general public and professionals with an average level of attention with regard to the goods in Class 3 and a higher-than-average level of attention with regard to the goods in Class 5.
30 That finding – which, moreover, is not disputed by the applicant – is correct and must be upheld.
The comparison of the goods and services
31 In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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).
32 The Board of Appeal found that the goods covered by the mark applied for were, in part, identical and, in part, similar to varying degrees to the goods covered by the earlier mark. In particular, it endorsed the Opposition Division’s detailed analysis which led it to conclude, for each of the goods concerned, that they were similar or identical to the ‘antiseptic soaps’ and ‘disinfectants’ covered by the earlier mark.
33 The applicant, for its part, merely states that the earlier mark covers only a very limited list of goods, whereas the mark applied for is registered for a much wider range of goods in Classes 3 and 5, and that it is not possible to conclude that the goods at issue are similar on the sole ground that they appear in the same classes of the Nice Classification.
34 In so doing, it must be held that the applicant failed to submit specific arguments to substantiate in any way the reasons why the goods at issue are different. In those circumstances, that argument must be rejected.
35 Consequently, it is necessary to uphold the Board of Appeal’s finding, which is not vitiated by an error of assessment, and to find that the goods at issue were, in part, identical and, in part, similar to varying degrees.
The distinctive character of the earlier mark
36 The applicant claims that the Board of Appeal erred in finding that the distinctive character of the earlier mark VIBASEPT was average.
37 In particular, it argues, first, that the element ‘sept’ is descriptive of the goods at issue for the relevant Bulgarian and Polish public, since it refers directly to the prevention of infections and the killing of bacteria, as is apparent from the English dictionary entries produced during the administrative procedure. Furthermore, relying on a report on the proficiency index in English for Bulgarians and Poles, it states that the relevant public should be understood as an English-speaking public. Therefore, as an English-speaking public, it would be able to understand the meaning of the word ‘sept’. Second, it submits that, given that there are more than 600 registered trade marks containing the sequence of letters ‘sept’ for goods in Classes 3 and 5, it is clear that that word element has a weak distinctive character and enjoys only limited protection as regards the goods at issue. Lastly, contrary to the assertions of the Board of Appeal, the term ‘sept’ is widely and effectively used on the market, according to the data available on the internet.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 In the present case, first of all, it should be noted that the applicant bases the present complaint on conclusions drawn from certain items of evidence which have been declared inadmissible in paragraph 18 above and which the Court cannot take into account in the present dispute. Thus, the claims concerning the level of proficiency in English on the part of the relevant public and its understanding of English words, including the word element ‘sept’, must be rejected.
40 Consequently, it is necessary to examine whether the applicant’s other arguments are such as to call into question the Board of Appeal’s finding that the earlier mark, taken as a whole, does not convey any specific meaning in relation to the goods at issue, with the result that its distinctive character should be regarded as average.
41 First, it must be borne in mind that, according to settled case-law, it may be that, when perceiving a sign, a consumer breaks it down into elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51; of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57; and of 19 May 2011, PJ Hungary v OHIM – Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 74).
42 However, in the present case, the applicant’s argument that the relevant public will be led to break down the word element ‘vibasept’ into two parts, namely ‘viba’ and ‘sept’, cannot succeed. The applicant has failed to demonstrate to the requisite legal standard that the element ‘sept’ has a clear and obvious meaning, in such a way that it is distinguished within the earlier mark. In addition, it has not shown that the word ‘sept’ will be understood by the relevant Bulgarian and Polish public as referring to the English word ‘antiseptic’, irrespective of the degree of proficiency in English on the part of the relevant public, which has also not been duly established. Furthermore, it has failed to establish that the term ‘vibasept’ had a specific meaning or that it resembled words known to that public.
43 Furthermore, as EUIPO argues in its response, even if part of the relevant public were able to distinguish the element ‘sept’ within the earlier mark and to link it to the English words ‘antiseptic’ or ‘septic’, that element would, at most, allude to certain characteristics of the goods at issue, namely their purpose, which is to combat microbial germs or the infections which they cause. Nevertheless, that element cannot be regarded as descriptive of the goods at issue, as the applicant claims.
44 In that regard, it must be borne in mind that a sign is descriptive if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (see judgment of 17 October 2012, MIP Metro v OHIM – J. C. Ribeiro (MISS B), T‑485/10, not published, EU:T:2012:554, paragraph 29 and the case-law cited).
45 However, it must be stated that, in the present case, neither the earlier mark considered as a whole nor the words ‘viba’ and ‘sept’, which result from breaking that mark down, convey any specific meaning such as to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods within the meaning of the case-law cited in paragraph 44 above.
46 Second, as regards the argument that the existence on the market of numerous trade mark registrations containing the term ‘sept’ to designate goods in Classes 3 and 5 demonstrates that the latter has a weak distinctive character, it is sufficient to note that, as EUIPO has argued, the relevant factor for the purposes of disputing the distinctive character of an element consists of its actual presence on the market, and not in registers or databases (see, to that effect, judgment of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). The registration of a trade mark does not in itself imply that it is actually used on the market or that it is used in respect of all the goods covered by the registration in question, which is why additional evidence demonstrating its actual use on the market is essential in that context. Therefore, the Board of Appeal rightly found, in essence, that the applicant had not established the presence on the market of the marks it relied on in order to demonstrate the weak distinctive character of the earlier mark.
47 In any event, even if the distinctive character of a component of the earlier mark were descriptive in relation to the goods at issue, the fact remains that, for the purposes of the global assessment of the likelihood of confusion, a comparison must be made by examining each of the marks at issue as a whole (judgment of 13 September 2023, Korres v EUIPO – Naos (EST. KORRES 1996 HYDRA-BIOME), T‑328/22, not published, EU:T:2023:533, paragraph 47). In that regard, it is not disputed in the present case that the word ‘vibasept’, considered as a whole, is fanciful since it has no meaning for the relevant public.
48 In those circumstances, it must be held that the Board of Appeal was right to find that the inherent distinctive character of the earlier mark was, therefore, average.
49 Consequently, the complaint must be rejected.
Comparison of the marks at issue
50 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see, to that effect, judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).
51 In that regard, 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 proceed to analyse 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).
52 Furthermore, 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. 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. 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 of the mark are negligible within the overall impression created by it (see judgment of 5 October 2022, Puma v EUIPO – CMS (CMS Italy), T‑711/20, not published, EU:T:2022:604, paragraph 41 and the case-law cited).
53 The earlier mark is a word mark consisting of the single word element ‘vibasept’.
54 The mark applied for is a figurative mark consisting of the word element ‘viviasept’, written in upper-case letters in a standard blue font, which is preceded by a figurative element representing a white ‘+’ symbol inside a red circle. Both elements are placed inside a light blue oval frame.
– The distinctive and dominant character of the signs at issue
55 The Board of Appeal found, in essence, that the word elements of the marks at issue were meaningless and could not be split. Next, as regards the mark applied for, it observed that the word ‘viviasept’ was the most distinctive element, whereas the rest of the elements, namely the figurative element consisting of a ‘+’ symbol, the oval frame and the colours were not particularly distinctive because of their laudatory or decorative nature. It concluded that the signs at issue did not contain any element which could be regarded as dominant in relation to the others.
56 The applicant maintains, in particular, that, since the word ‘sept’ is weakly distinctive in relation to the goods at issue, the word elements ‘viba’ and ‘vivia’, respectively, should have been regarded as the most distinctive components of the signs at issue, in respect of which the comparison of the signs at issue should have been made.
57 EUIPO and the intervener dispute the applicant’s arguments.
58 It is true that a word mark composed of a single word may contain a syllable or suffix which may be regarded as the most distinctive and dominant element of that mark (see, to that effect, judgments of 3 July 2003, Alejandro v OHIM – Anheuser-Busch (BUDMEN), T‑129/01, EU:T:2003:184, paragraph 54; and of 5 April 2006, Madaus v OHIM – Optima Healthcare (ECHINAID), T‑202/04, EU:T:2006:106, paragraph 55).
59 However, it is apparent from the analysis carried out in paragraphs 42 to 49 above that, given that the word elements of the signs at issue do not convey any meaning with regard to the relevant public, they cannot be split as the applicant claims. After all, there is nothing to indicate that the average consumer in the relevant public will attach more importance to the word elements ‘viba’ and ‘vivia’.
60 Therefore, it must be confirmed that the Board of Appeal was right to find that the mark applied for did not have any dominant elements and that the word elements which it comprised were the most distinctive for the purposes of the comparison of the signs.
– Visual comparison
61 The Board of Appeal found that there was at least an average degree of visual similarity between the marks at issue on account of the identical presence of the sequence of the first two letters ‘vi’ and the last five letters ‘asept’ within those marks. That identity is noticed by the relevant public despite the visual differences between, on the one hand, the letter ‘b’ in the earlier mark and the syllable ‘vi’ of the mark applied for and, on the other, the figurative elements of that mark, on account of their secondary nature.
62 The applicant submits that the marks at issue are visually different, since the mark applied for contains several elements that make it different from the earlier mark. Those elements are, in particular, the white ‘+’ symbol on a round red background, the word element of the mark applied for which does not contain the letter ‘b’ and the differences relating to the graphic representation of the mark applied for.
63 EUIPO and the intervener dispute the applicant’s arguments.
64 In the present case, it should be noted that the word elements ‘viviasept’ and ‘vibasept’ of the marks at issue have in common seven letters in the same order and placed at the beginning and at the end of the signs. They differ in the letters ‘vi’ and in the letter ‘b’, located in their central part, which is why those letters have a limited visual impact, in view of their position and the fact that the word elements at issue have not only an identical initial part, namely ‘vi’, but also an identical final part, namely ‘sept’. Furthermore, as the Board of Appeal correctly found, the figurative elements of the sign applied for play a secondary role in the overall perception of that sign. The white cross inside the red circle will be perceived either as conveying a positive message evoking the idea of something that increases or improves, or as a reference to medicine or health. In both cases, its distinctive character will be lower than that of the word element ‘viviasept’. Similarly, the light blue oval frame, which represents a basic geometric shape, and the dark blue colour of the word element ‘viviasept’ are merely decorative elements and will therefore not be likely to attract the attention of consumers.
65 In that regard, it is apparent from the case-law that, where a mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by quoting the name of the mark concerned than by describing the figurative element (judgment of 30 March 2022, SFD v EUIPO – Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION), T‑35/21, not published, EU:T:2022:173, paragraph 58).
66 Consequently, it must be held that the Board of Appeal was right to find that there was an average degree of visual similarity between the signs at issue.
– Phonetic comparison
67 The Board of Appeal found that the signs at issue were phonetically similar to at least an average degree on account of the identical pronunciation of their first syllable ‘vi’ and of their final letters ‘asept’ and that the difference resulting from the additional syllable ‘vi’ of the mark applied for was not such as to counteract the existing similarities. It observed, moreover, that the figurative elements had no impact on the pronunciation of the sign applied for, while stating that, even if part of the public pronounces the ‘+’ symbol, that element would play only a subordinate role in the phonetic comparison on account of its non-distinctive character.
68 The applicant claims, in essence, that the signs at issue are phonetically different, on account of the presence of the letter ‘b’ in the earlier mark and the different number of syllables of the word elements constituting the two signs at issue.
69 EUIPO and the intervener dispute the applicant’s arguments.
70 In the present case, the pronunciation of the word elements ‘viviasept’ and ‘vibasept’ of the marks at issue differs in the letters ‘vi’ of the sign applied for and in the letter ‘b’ of the earlier sign. Similarly, they differ in the ‘+’ symbol of the mark applied for as regards the part of the public which will pronounce it. Nevertheless, it should be noted, as EUIPO does, that the aforementioned differences cannot offset the phonetic similarities between the signs at issue. First, the signs coincide in the identical sound of the first letters ‘vi’ and the last letters ‘asept’. Second, the different pronunciation of the letters in the third place in each of the terms, namely ‘b’ and ‘v’, is similar as they are bilabial consonants. In addition, the impact of that difference is less in relation to the parts of the identical word elements which are at the beginning and at the end of those words. Third, even if it is unlikely that the ‘+’ symbol will be pronounced, in the eyes of consumers, its impact will be limited due to its lack of distinctive character.
71 It follows that the Board of Appeal did not err in its assessment by finding that the visual similarity of the signs at issue was, at the very least, average.
– Conceptual comparison
72 The Board of Appeal found that the conceptual comparison of the signs at issue was impossible at least for the majority of the relevant public and, therefore, had no bearing on the assessment of the signs at issue.
73 Those findings – which, moreover, are not disputed by the applicant – must be upheld.
The overall assessment of the likelihood of confusion
74 In the contested decision, the Board of Appeal found that, in view of the at least average visual and phonetic similarity between the signs at issue, the identity and similarity of the goods concerned and the normal distinctiveness of the earlier mark, the differences between those signs were not sufficient to rule out the existence of a likelihood of confusion on the part of the relevant public with a level of attention varying from average to higher than average.
75 The applicant takes the view that any likelihood of confusion or association must be ruled out, in view of the lack of similarity between them and between the goods at issue. It states, inter alia, that the distinctive character of the earlier mark is weak and that there are, in the European Union, more than 600 registered marks including the word element ‘sept’ and covering goods in Classes 3 and 5.
76 EUIPO and the intervener dispute the applicant’s arguments.
77 It should be recalled 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
78 In the present case, it follows from the considerations already set out that the relevant Bulgarian and Polish public displays a level of attention varying from average to higher than average for the goods at issue. Next, it was found that the goods covered by the marks at issue were, in part, identical and, in part, similar to varying degrees. Furthermore, it was pointed out that the visual and phonetic similarity of the signs at issue was, at the very least, average, whereas a conceptual comparison of the signs was not possible. Lastly, the earlier mark has normal inherent distinctive character, since it has no connection with the goods concerned and is not understood by the relevant public.
79 In the light of the foregoing, it must be concluded that the Board of Appeal did not err in its assessment by finding that there was, in the present case, a likelihood of confusion.
80 Consequently, in the light of all the foregoing considerations, the present action must be dismissed.
Costs
81 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
82 In the present case, although the applicant has been unsuccessful, the intervener has not applied for costs, whereas EUIPO has applied for costs to be awarded against the applicant only in the event of a hearing.
83 Consequently, since no hearing has been arranged, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Drinks Prod SRL, the European Union Intellectual Property Office (EUIPO) and Coolike-Regnery GmbH each to bear their own costs.
Delivered in open court in Luxembourg on 6 March 2024.
V. Di Bucci | | M. van der Woude |