Provisional text
JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
8 June 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark SO’BiO ētic — Earlier EU and national word marks SO… ? — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Detriment to reputation — Article 8(5) of Regulation No 207/2009)
In Case T‑341/13 RENV,
Groupe Léa Nature SA, established in Périgny (France), represented by S. Arnaud, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Debonair Trading Internacional Lda, established in Funchal (Portugal), represented by T. Alkin, Barrister,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 March 2013 (Case R 203/2011-1), relating to opposition proceedings between Debonair Trading Internacional and Groupe Léa Nature,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, S. Papasavvas (Rapporteur) and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 June 2013,
having regard to the response of EUIPO lodged at the Court Registry on 3 October 2013,
having regard to the response of the intervener lodged at the Court Registry on 20 September 2013,
having regard to the decision of 28 November 2013 refusing leave to lodge a reply,
further to the hearing on 24 June 2014,
having regard to the judgment of the General Court of 23 September 2014,
having regard to the judgment of the Court of Justice of 27 October 2016,
having regard to the observations of the applicant, EUIPO and the intervener lodged at the Court Registry on 3 January 2017, 22 November 2016 and 22 December 2016 respectively,
having regard to the fact that no request for a hearing was submitted by the main 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
Background to the dispute
1 On 27 March 2008, the applicant, Groupe Léa Nature, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Classes 3 and 25 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 correspond, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; eau de toilette, products for perfuming linen, perfumery, bases for flower and plant perfumes, perfumed micro-capsules, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, milks for the face and body, cleansing milk, ointments for cosmetic purposes, cosmetic preparations for baths, not for medical purposes, bath salts, not for medical purposes; deodorants for personal use; aromatics [essential oils], scented wood, eau de Cologne, disinfectant soaps and air fresheners, lavender water, fumigation preparations [perfumes], foam baths, not for medical purposes, cosmetic preparations for slimming purposes, beauty masks, sun-tanning preparations [cosmetics], depilatory preparations, cosmetics for animals, make-up removing preparations, lotions for cosmetic purposes, make-up preparations, nail care preparations, exfoliating cosmetic preparations, mint for perfumery, perfumed potpourris, soaps for foot perspiration, tissues impregnated with cosmetic lotions, scented water, extracts of flowers and plants (perfumery), mint essence for perfumery, pastilles and chewing gum for cosmetic purposes, all the aforesaid products being derived from organic farming or made from products derived therefrom’;
– Class 25: ‘Clothes (clothing), footwear (except orthopaedic footwear), headgear, dressing gowns, shirts, T-shirts, scarves, bandanas, hats, helmets, overcoats, parkas, all the aforesaid products being derived from organic farming or made from goods derived from organic farming’.
4 The EU trade mark application was published in Community Trade Marks Bulletin No 23/2008 of 9 June 2008.
5 On 9 September 2008, the intervener, Debonair Trading Internacional Lda, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the following earlier rights:
– the EU word mark SO… ?, which was filed on 7 March 1997, registered on 26 February 2001 under the number 485078 and covers goods in Class 3 corresponding to the following description: ‘Toilet preparations; preparations for the care of the skin, scalp and the body; suntanning preparations; preparations for reinforcing and strengthening nails; preparations for use in the shower and the bath; toilet soaps; preparations for toning the body; all being non-medicated; perfumes; fragrances; aftershaves, milks, oils, creams, gels, powders and lotions; shaving foams; cosmetics; eau de cologne; toilet waters; essential oils; shampoos; conditioners; hair lotions; preparations for the hair; hair styling products; anti-perspirants; deodorants for personal use; dentifrices’;
– the earlier national word mark SO… ?, which was filed on 18 March 2008, registered on 1 August 2008 in the United Kingdom under the number 2482729 and covers goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear, T-shirts, caps’.
7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).
8 On 23 November 2010, the Opposition Division rejected the opposition in its entirety.
9 On 21 January 2011, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 26 March 2013 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the trade mark application. In particular, the Board of Appeal stated, at the outset, that, since the Opposition Division had based its decision on a comparison of the mark applied for with the earlier marks, it would review that decision on the basis of those earlier rights. In that regard, the Board of Appeal found, first, that, with the exception of the ‘bleaching preparations and other substances for laundry use’ in Class 3, the goods covered by the mark applied for and the goods covered by the earlier marks were similar or identical and, secondly, that the signs at issue were highly similar visually, on account of the presence of the element ‘so’, which those signs had in common and which was the dominant element in those signs, and that they were phonetically similar to a certain extent. Consequently, in the light of the at least normal degree of inherent distinctiveness of the element ‘so’ in relation to the goods at issue, the enhanced distinctiveness and reputation which the earlier marks had acquired in connection with cosmetics in a substantial part of the European Union and the fact that the intervener was the proprietor of a family of marks containing the element ‘SO… ?’ in the same sector, the Board of Appeal found that there was a likelihood of confusion between the signs at issue with regard to the goods which were identical or similar. Lastly, it found that, as regards the ‘bleaching preparations and other substances for laundry use’, in relation to which the opposition had not been upheld on the basis of Article 8(1)(b) of Regulation No 207/2009, there was a risk that the sale of those goods would be detrimental to the repute of the earlier marks for the purposes of Article 8(5) of Regulation No 207/2009.
Procedure before the General Court and the Court of Justice
11 By application lodged at the Court Registry on 27 June 2013, the applicant brought an action for annulment of the contested decision.
12 In support of its action, the applicant put forward four pleas in law, alleging, in essence, first, an error of law in the choice of the legal basis for the contested decision and breach of the principle of legal certainty, the principle of the protection of legitimate expectations and the right to a fair hearing; secondly, an error of law in the assessment of the genuine use of the earlier marks; thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009; and, fourthly, infringement of Article 8(5) of Regulation No 207/2009.
13 By its judgment of 23 September 2014, Groupe Léa Nature v OHIM — Debonair Trading Internacional (SO’BiO ētic) (T‑341/13, not published, EU:T:2014:802) (‘the first judgment of the General Court’), the General Court, after rejecting the first and second pleas, upheld the action on the basis of the third and fourth pleas and annulled the contested decision.
14 In order to rule to that effect, the General Court found, in essence, in the context of the comparison of the signs at issue carried out with regard to the third plea, that, in spite of their phonetic similarity, which was, moreover, low in degree, the signs at issue were not similar and that, since one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 was not satisfied, that plea had to be upheld. That finding led the General Court to hold that the cumulative conditions for the application of Article 8(5) of that regulation were not satisfied and thus to uphold the fourth plea as well.
15 By application lodged at the Registry of the Court of Justice on 21 November 2014, the intervener brought an appeal against the first judgment of the General Court. In support of its appeal, it put forward two grounds of appeal alleging, first, infringement of Article 8(1)(b) and (5) of Regulation No 207/2009 and, secondly, that various errors had been made in assessing the visual impact of the element ‘so’, which the marks have in common.
16 By its cross-appeal, EUIPO also sought the setting aside of the first judgment of the General Court. In that regard, EUIPO put forward two grounds of appeal alleging, first, failure to state reasons for that judgment, as regards the distinctiveness of the element ‘so’, and, secondly, infringement of Article 8(5) of Regulation No 207/2009.
17 By judgment of 27 October 2016, Debonair Trading Internacional v EUIPO (C‑537/14 P, not published, EU:C:2016:814) (‘the judgment on appeal’), the Court of Justice set aside the first judgment of the General Court, referred the case back to that Court and reserved the costs.
18 The Court of Justice pointed out, first of all, that the appeal related only to the General Court’s assessment in the context of the third and fourth pleas put forward at first instance. Furthermore, it found that the third part of the second ground of appeal in the main appeal and the first ground of appeal in the cross-appeal, which alleged, respectively, a contradiction in the grounds and a failure to state reasons as regards paragraph 73 of the first judgment of the General Court and related to the third plea put forward at first instance, were linked and therefore examined them together.
19 In essence, the Court of Justice held that the statement of reasons in the first judgment of the General Court was contradictory because, in expressing its views concerning the earlier marks, the General Court had stated, on the one hand, in paragraph 73 of its judgment, that the element ‘so’, the only word element in those marks, had a laudatory function and, on the other hand, in paragraph 87 of that judgment, that that laudatory function existed when the element ‘so’ was accompanied by another word. Lastly, the Court of Justice held that such a contradiction in the reasoning amounted to a failure to state reasons, since the parties and the Court of Justice were unable to ascertain whether, in the General Court’s analysis, the word element ‘so’ had a laudatory function only when it was used with another word or also when it was used on its own.
20 On the basis of that assessment, the Court of Justice set aside the first judgment of the General Court, holding that it was not necessary to examine the other grounds of appeal put forward in the context of the main appeal and the cross-appeal, which were not capable of resulting in that judgment’s being set aside to any greater extent.
Procedure and forms of order sought following referral of the case
21 After delivery of the judgment on appeal and in accordance with Article 216(1) of the Rules of Procedure of the General Court, the case was assigned to the Sixth Chamber of the General Court.
22 The parties were requested to lodge their observations, in accordance with Article 217(1) of the Rules of Procedure. The applicant, EUIPO and the intervener lodged their observations within the prescribed period, namely, on 3 January 2017, 22 November 2016 and 22 December 2016 respectively.
23 In its observations, the applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
24 In their observations, EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs they have incurred.
Law
25 It must be pointed out at the outset that, although the first judgment of the General Court has been set aside in its entirety, there is no need to rule again on the first and second pleas, which were rejected by the General Court, because the main appeal and the cross-appeal related only to the third and fourth pleas put forward at first instance. In that regard, it is appropriate to refer to the assessment set out in paragraphs 17 to 27, 31 to 37 and 41 to 53 of that judgment, which was not challenged by the parties before the Court of Justice.
26 Following the setting aside of the first judgment of the General Court by the Court of Justice, it therefore remains to examine the third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in the light of the guidance in the judgment on appeal and the observations of the parties on the conclusions to be drawn from that latter judgment. In that regard, it will be necessary to examine whether there is a likelihood of confusion as regards the goods covered by the marks at issue which are identical or similar and then to examine the alleged infringement of Article 8(5) of Regulation No 207/2009, put forward in the context of the fourth plea, in relation to the goods which are not similar, with regard to which Article 8(1)(b) of Regulation No 207/2009 is not applicable.
The third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
27 First, the applicant submits that the Board of Appeal made an error of assessment in finding that the signs at issue were similar on the ground that the element ‘so’ was the dominant element. According to the applicant, that laudatory element has a weak distinctive character, inasmuch as it is commonly used in relation to cosmetics and textiles, with the result that it should not have been taken into account more than the other elements of the signs at issue for the purposes of comparing those signs. Secondly, the applicant submits that, given the overall visual, phonetic and conceptual impressions created by the signs at issue, those signs are not similar. In that regard, in its observations on the judgment on appeal, it maintains that, even if it were to be admitted that there is a contradiction in the reasoning in the first judgment of the General Court, that would not affect the conclusion that there is no similarity between the signs at issue and no likelihood of confusion. Thirdly, the applicant submits that the Board of Appeal’s assessment with respect to the enhanced distinctiveness of the earlier marks and the existence of a family of marks of which the intervener is allegedly the proprietor is marred by contradictions and, fourthly, the applicant submits that the intervener has not proved the existence of a family of marks containing the element ‘so’.
28 EUIPO takes the view that, following the judgment on appeal, the General Court must reconcile the contradiction which the Court of Justice held existed between paragraphs 73 and 87 of the first judgment of the General Court in favour of the General Court’s reasoning in the latter of those paragraphs, according to which the element ‘so’ may, in the absence of any context, have various meanings and cannot be regarded as having a laudatory function in relation the goods at issue. It submits that, if it does so, the General Court should reconsider its position regarding the dominant character of that element and, consequently, its position on the similarity of the signs. In that regard, EUIPO takes the view that, regardless of whether the element ‘so’, which the signs have in common, is dominant, those signs are similar on account of the inherent distinctiveness of that element and its position at the beginning of the signs. In addition, both EUIPO and the intervener submit that all the requirements for regarding the intervener as the proprietor of a family of marks are satisfied.
29 In the light of the error of law identified by the judgment on appeal, the intervener requests that the General Court re-examine its findings, first, that the element ‘so’ is to be regarded as having only weak inherent distinctiveness in relation to the goods in question by reason of its alleged laudatory function and is not the dominant element of the signs at issue, secondly, that those signs are not visually similar and, lastly, that registration of the mark applied for would not be contrary to Article 8(1)(b) of Regulation No 207/2009.
30 Article 8(1)(b) of Regulation No 207/2009 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.
31 Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in the European Union or in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
32 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).
33 The present plea must be examined in the light of those principles.
34 In the first place, as regards the relevant public and as the Board of Appeal found without being contradicted by the parties in that regard, in the light of the fact that the goods covered by the signs at issue are everyday products which are aimed at the general public as well as at retailers such as shops, drug stores and supermarkets, including those which focus on organic farming, that public consists of average consumers, who are reasonably well informed and reasonably observant and circumspect. Furthermore, since one of the earlier marks is an EU trade mark and the other is a United Kingdom trade mark, in respect of which the intervener also relies on the existence of a family of marks, it must be held, as the Board of Appeal, moreover, rightly found, a finding which has not been contradicted by the parties, that the relevant public consists of English-speaking consumers in the European Union, account being taken, in particular, of the perception of consumers in the United Kingdom.
35 In the second place, as regards the comparison of the goods covered by the marks at issue, the Board of Appeal found that, with the exception of ‘bleaching preparations and other substances for laundry use’, which fall within Class 3 and are cleaning agents, the goods covered by the mark applied for and the goods covered by the earlier marks were identical or similar. That assessment, which is correct and has not been challenged by the parties, must be upheld.
The comparison of the signs
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).
37 According to the 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, namely the visual, phonetic and conceptual aspects (see judgment of 12 July 2012, Vermop Salmon v OHIM — Leifheit (Clean Twist), T‑61/11, not published, EU:T:2012:373, paragraph 26 and the case-law cited).
38 It is also important to bear in mind that, in order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, phonetic and conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed (see judgment of 25 June 2008, Otto v OHIM — L’Altra Moda (l’Altra Moda), T‑224/06, not published, EU:T:2008:221, paragraph 29 and the case-law cited).
39 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
40 As regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
41 It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 31 January 2013, K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), T‑54/12, not published, EU:T:2013:50, paragraph 24 and the case-law cited).
42 In the present case, the Board of Appeal found that the word element ‘so’, which is situated at the beginning of the signs at issue, dominated the overall impression created by those signs. In that regard, it stated, first, that punctuation is generally not distinctive and, secondly, that the word elements ‘bio’ and ‘ētic’ and the graphical elements of the mark applied for were devoid of any distinctive character. Accordingly, it found that the fact that the element ‘so’ was fully reproduced in the mark applied for led to the conclusion that the signs at issue were highly similar visually and phonetically similar to a certain extent. By contrast, it found that the signs at issue were not conceptually similar.
– The visual comparison
43 It should be noted that the earlier word marks consist of the word ‘so’, followed by three suspension points and a question mark. The mark applied for, which is a composite figurative mark, consists of the word element ‘so’, followed by an apostrophe, and the word elements ‘bio’ and ‘ētic’. Those elements are placed one below the other in a rectangle with rounded corners, which is divided into two parts. The upper part of the rectangle, which occupies approximately three quarters of the total area of the sign, contains the element ‘so’, written in upper-case letters in a grey typeface on a white background, to which the apostrophe has been added and below which is the element ‘bio’ in a black typeface on a white background. The first and last letters of the element ‘bio’ are in upper case, while the middle letter ‘i’, which is written in lower case, is the same size as the two other letters. The lower part of the rectangle is black and contains the element ‘ētic’, which is written in lower case in a white typeface. Lastly, the elements ‘so’ and ‘bio’ are the same size and are much larger than the element ‘ētic’.
44 First of all, without it being necessary to ascertain whether the Board of Appeal was right in classifying the element ‘so’ in the signs at issue as dominant, it is important to state that, as the intervener and EUIPO point out in their observations, the fact that the first element in the earlier marks is fully included in the mark applied for and is also in first position in the upper part of that mark makes it impossible to rule out any similarity between the signs at issue. In that regard, it must be borne in mind, first, that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar and, secondly, that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see, to that effect, judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraphs 26 and 36 and the case-law cited).
45 As regards the mark applied for, it must be borne in mind that it is apparent from settled case-law that, where a mark consists of word and figurative elements, the word element of the mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element (see judgment of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited; judgment of 17 January 2012, Kitzinger v OHIM — Mitteldeutscher Rundfunk and Zweites Deutsches Fernsehen (KICO), T‑249/10, not published, EU:T:2012:7, paragraph 42).
46 In the present case, as the Board of Appeal found, the figurative element of the mark applied for, which is a black and white frame with rounded corners in which the word elements of the sign applied for are included, is commonplace and serves only to outline the word elements. Consequently, as it has only a purely ornamental function, that element is negligible in the overall impression created by the sign, with the result that the relevant public is not likely to remember it.
47 Furthermore, as regards the word elements ‘bio’ and ‘ētic’, it is necessary to uphold the Board of Appeal’s assessment that they may be perceived as a reference to the composition or the origin of the goods covered, or to environmentally-friendly methods of producing cosmetic products, particularly because the specification of those goods indicates that they are ‘derived from organic farming or made from products derived therefrom’. However, notwithstanding its descriptiveness, having regard to its size, which is the same as that of the element ‘so’, its position in the centre of the sign and the particular way in which the letter ‘i’ is written, the relevant public is likely to remember the element ‘bio’ in the same way as the element ‘so’. By contrast, the element ‘ētic’, which is smaller and is in the lower part of the sign, is not likely to be remembered by the relevant public and appears negligible in the overall impression created by that sign.
48 Likewise, the apostrophe which has been added to the element ‘so’, notwithstanding the fact that it does not appear in the earlier marks, is negligible in the perception of the sign and, consequently, contrary to what the applicant submits, will not make it possible to differentiate between the marks at issue.
49 It follows from all of the foregoing that, notwithstanding the different lengths and the structures of the signs at issue, those signs are visually similar to a certain extent.
– The phonetic comparison
50 It must be pointed out that the earlier marks consist of a single syllable, namely ‘so’, whereas the mark applied for consists of five syllables, namely ‘so’, ‘bi’, ‘o’, ‘e’ and ‘tic’, with the result that the length, rhythm and intonation of those marks are different, particularly because the earlier marks contain suspension points and a question mark in their final part. Consequently, the signs at issue coincide phonetically only in their first syllable, which the relevant public will, as the Board of Appeal found, pronounce in the same way. The punctuation marks in the earlier marks are not capable of influencing the way in which that element is pronounced, as their impact is limited solely to the intonation of that element.
51 In those circumstances and in accordance with the case-law cited in paragraph 44 above, it must be held that the signs at issue are phonetically similar to a certain extent.
– The conceptual comparison
52 The Board of Appeal observed that consumers would understand the earlier marks SO… ? as an introduction to a question whereas the sign applied for SO’BiO ētic would be understood as a reference to a ‘bio-ethical product’, with the result that the signs at issue were not conceptually similar.
53 It must be stated at the outset that the applicant does not, by its arguments, dispute that finding.
54 In that regard, the applicant submits that the element which is common to the signs at issue is used differently from a semantic point of view on account, on the one hand, of the presence of the punctuation marks in the earlier marks, which imply a question, and, on the other hand, of the invented words which accompany that element in the sign applied for and which have no meaning for consumers in the European Union. It follows that, even if they were well founded, those arguments would have to be rejected as ineffective. Since the Board of Appeal found that there was no conceptual similarity between the signs at issue, such arguments have no bearing on the legality of the contested decision.
55 In any event, contrary to the applicant’s arguments, as the Board of Appeal correctly pointed out in paragraph 47 of the contested decision, the element ‘bio’ in the sign applied for might readily be perceived by the relevant public as an abbreviation for the word ‘biological’, which means ‘organic’ and refers to the origin or composition of the goods concerned. Lastly, although the element ‘ētic’ does not come from English, it might, notwithstanding the horizontal bar above the letter ‘e’, refer to the words ‘ethic’ or ‘ethical’, which the applicant, moreover, admits, and, as the Board of Appeal pointed out, therefore be associated with environmentally-friendly methods of production, such as those which do not include tests on animals. However, as a whole, the sign applied for has no specific meaning. Furthermore, since the earlier marks do not contain the elements ‘bio’ and ‘ētic’, it must be held, as the Board of Appeal found, that the signs at issue are not conceptually similar.
56 It follows from the foregoing considerations that, assessed as a whole, the signs at issue are similar.
The likelihood of confusion
57 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
58 As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
59 The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).
60 In the present case, the Board of Appeal found that, in the light of the visual and phonetic similarity between the signs, the enhanced distinctiveness and reputation which the earlier marks had acquired in connection with cosmetics and the fact that the intervener was the proprietor of a family of marks containing the combination of elements ‘SO… ?’ in the same field, there was a likelihood of confusion with regard to all the goods covered by the marks at issue which were similar or identical. It thus took the view that the mark applied for might be perceived as belonging to the intervener’s family of marks and as covering a new range of biological goods which are produced in line with ethical principles, with the result that the consumer might make a link between the mark applied for in the field of toiletries and cosmetics and the earlier marks.
61 The applicant confines itself to submitting that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue, claiming that those signs differ substantially owing to the elements ‘bio’ and ‘ētic’ in the mark applied for, which are not common on the European Union market. Furthermore, it maintains, first, that the intervener has not proved the use of a family of marks and, secondly, that, since the element ‘so’ in the mark applied for does not display characteristics capable of associating it with that family, it has a different semantic content.
62 In the first place, the arguments relating to the lack of any similarity between the signs must be rejected for the same reasons as those set out in paragraphs 43 to 55 above, relating to the comparison of the signs at issue.
63 In the second place, as regards the applicant’s argument that the Board of Appeal erred in assessing the sign “so”’, inasmuch as it found, in paragraph 62 of the contested decision, that the goods covered by the earlier marks were available in 11 Member States solely on the basis of an affidavit by the director of the intervener’s exclusive licensee, while disregarding the evidence to the contrary provided by the applicant, it is important to point out the following.
64 First, to the extent that that argument, which is not, moreover, unambiguous, should be interpreted as seeking to call into question the Board of Appeal’s finding that the earlier marks had acquired enhanced distinctiveness as a result of the public’s recognition of them, it must be stated that that finding is not based solely on the affidavit in question. It is apparent from the contested decision and from the file relating to the proceedings before EUIPO that the intervener provided a large number of items of evidence, such as data relating to sales of the goods covered by the earlier marks and to amounts invested for promotional purposes or a survey carried out by an independent company relating to how the earlier marks ranked in the United Kingdom, in terms of turnover, for female fragrances. Those items of evidence were, moreover, also attached as annexes to the affidavit in question. Secondly, the allegedly contrary evidence provided by the applicant, which consists, in essence, of a market study on the use of registered trade marks containing the term ‘so’ in three Member States in relation to textiles and a search for identical trade marks in respect of goods in Classes 3 and 25, is not capable of calling into question either the Board of Appeal’s finding relating to the enhanced distinctiveness of the earlier marks or the fact, pointed out in paragraph 62 of the contested decision, that the goods covered by the earlier marks are available in approximately 3 800 shops located in 11 Member States.
65 In the third place, it is sufficient to point out that the alleged contradiction as regards the enhanced distinctiveness of the earlier marks by which the contested decision is marred is the result of a misreading of that decision on the part of the applicant. The applicant claims that the Board of Appeal found that the earlier marks had acquired enhanced distinctiveness as a result of the public’s recognition of them, owing to the fact that the use of those marks was longstanding, intensive and spread over a substantial part of the European Union, although it had up until then focussed in its examination relating to the use of those marks essentially on the element ‘so’ in those marks. It is, however, apparent from the reasons for the contested decision that the Board of Appeal did indeed assess the use of the SO… ? marks as a whole. Moreover, in so far as, according to the wording in the application, the applicant seems to be claiming that the Board of Appeal examined the use ‘of the “SO” marks’, it is sufficient to state that no mark consisting solely of the element ‘so’ has been filed. What is more, as is apparent from the case-law cited in paragraphs 58 and 59 above, the more distinctive the trade mark, the greater will be the likelihood of confusion.
66 Lastly, it is apparent from the case-law that, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is then appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by those signs are marketed. If the goods covered by the marks at issue are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to those goods, the visual similarity between the signs will as a general rule be more important (see judgment of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 61 and the case-law cited). As the Board of Appeal correctly pointed out, since the goods at issue are offered for sale by means of self-service, in a supermarket, drugstore or fashion store, the visual similarity which has been found to exist will have a greater impact on the finding as to whether there is a likelihood of confusion.
67 Consequently, it must be held that, in the light of the identity or similarity of the goods at issue, with the exception of the ‘bleaching preparations and other substances for laundry use’ in Class 3 covered by the mark applied for, the similarity of the signs at issue, the average level of attention of the relevant public and the enhanced distinctiveness and reputation of the earlier marks, which the applicant has not convincingly called into question, the Board of Appeal’s assessment that there is a likelihood of confusion between the marks at issue, as regards the goods which are identical or similar, must be confirmed.
68 In those circumstances, the third plea must be rejected, without it being necessary to examine whether the Board of Appeal was right in finding that a family of marks of which the intervener is allegedly the proprietor existed, since that question is only one factor among others for the purpose of determining whether there is a likelihood of confusion.
The fourth plea, alleging infringement of Article 8(5) of Regulation No 207/2009
69 It should be noted at the outset that, as is apparent from paragraph 95 of the first judgment of the General Court, the applicant, when it was questioned at the hearing of 24 June 2014, withdrew the complaint made in the context of that plea, by which it claimed that the Board of Appeal had infringed its right to a fair hearing in referring to a trade mark which was not the subject of the dispute.
70 It follows that the General Court will confine its examination of the present plea solely to the complaint alleging that the Board of Appeal erred in assessing the conditions for the application of Article 8(5) of Regulation No 207/2009 as regards the ‘bleaching preparations and other substances for laundry use’ in Class 3 covered by the mark applied for, with regard to which the existence of a likelihood of confusion was ruled out.
71 In that regard, the applicant submits that the Board of Appeal did not correctly assess the matter of the earlier marks’ reputation and that it upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009 despite the different nature of the goods at issue. It maintains that it did not therefore examine all the necessary conditions for the application of that provision, relating, inter alia, to the probative character of the evidence provided by the intervener in that context. Furthermore, it submits that the intervener merely claimed that the earlier marks and the mark applied for were similar and that the earlier marks had a reputation, without, however, providing any facts or evidence in support of the claim that the use of the mark applied for would be likely to be detrimental to the repute of the earlier marks. In the alternative, the applicant submits that the relevant public will not establish a link between the signs at issue solely because of the presence of the element ‘so’.
72 The intervener and EUIPO dispute those arguments.
73 Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
74 The purpose of Article 8(5) of Regulation No 207/2009 is not to prevent the registration of any mark which is identical or similar to a mark with a reputation. The objective of that provision is, inter alia, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it should be stated that the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark. It must, however, adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (judgment of 25 May 2005, Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS), T‑67/04, EU:T:2005:179, paragraph 40).
75 It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgment of 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 25 and the case-law cited).
76 More specifically, the third of the conditions for the application of Article 8(5) of Regulation No 207/2009 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The second type of risk referred to, also known as ‘the risk of tarnishment’ (see judgment of 15 September 2016, Arrom Conseil v EUIPO — Nina Ricci (Roméo has a Gun by Romano Ricci), T‑359/15, not published, EU:T:2016:488, paragraph 83 and the case-law cited), occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
77 In that regard, it should be recalled that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraphs 43 and 44).
78 The existence of such a link must be subject to an overall assessment, taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 45).
79 It is in the light of those principles that the lawfulness of the contested decision must be examined.
80 In the present case, the Board of Appeal concluded that the sale of household cleaning products would affect the image, connected with lifestyle, youth and adventure, of the earlier marks, which had a reputation for cosmetics such as perfumes or fragrances in a substantial part of the European Union, and would thus risk damaging the reputation of those marks. In that regard, it took the view that, since those products were of a conflicting nature (‘antagonistic’), consumers of cosmetics, in particular of soaps, cleaning milks or perfumes, might feel concerned when buying those products under a trade mark which also covered products for bleaching or laundry products, given that the latter goods could pose a danger to health.
81 It must be pointed out, first and foremost, that, since the General Court has held, in the context of the third plea, that the signs at issue are similar (see paragraph 56 above), the first condition laid down by Article 8(5) of Regulation No 207/2009 is satisfied.
82 As regards the second condition, that the earlier marks must have a reputation, it is sufficient to state that the applicant does not put forward any argument in support of its claim that the Board of Appeal did not correctly assess the matter of that reputation.
83 According to the case-law, in order to satisfy the requirement of reputation, an earlier mark must be known by a significant part of the public which is relevant in relation to the goods or services covered by that trade mark (see judgment of 27 October 2016, Spa Monopole v EUIPO — YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 29 and the case-law cited).
84 In that regard, it is apparent from the contested decision that the Board of Appeal relied on the following factors, which arise out of the evidence provided by the intervener:
– the fact that, in 2005, according to a study carried out by an independent company, in terms of the market shares held by the earlier marks, the SO… ? brand ranked fifteenth in the United Kingdom for female fragrances;
– the considerable volume of sales of cosmetic products by the intervener’s licensee, between 2006 and 2008, in a substantial part of the European Union (6 million products bearing the mark SO… ? and 35 million products in respect of all the intervener’s marks, which are available in 3 800 shops in the Czech Republic, Denmark, Ireland, Italy, Cyprus, Malta, the Netherlands, Austria, Poland, Finland and Sweden);
– the investment of considerable amounts in promoting cosmetics sold under the mark SO… ? by means of advertising spots, which have been broadcast on television in the United Kingdom since 2006 and also on Danish, Finnish and Swedish television since 2008, and of publications in magazines for teenagers in the United Kingdom or the distribution of numerous giveaways in the United Kingdom.
85 In the light of those factors, the Board of Appeal did not err in finding that the earlier marks had a reputation in a substantial part of the European Union.
86 It is sufficient to point out that, by its arguments, the applicant seems more to be disputing that the intervener has shown that the third condition necessary for the application of Article 8(5) of Regulation No 207/2009 is satisfied, namely that there is a risk that the use without due cause of the mark applied for would be detrimental to the repute of the earlier marks (‘the risk of tarnishment’), a condition which it submits the Board of Appeal did not examine. In that context, it also disputes the possibility of a link being established in the minds of the relevant consumers solely on account of the presence of the element ‘so’, in the light of the different nature of the goods at issue.
87 As regards the relevant public which must be taken into consideration, it is important to the bear in mind that the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
88 In the present case, the relevant public consists of average consumers of cosmetic products in the European Union.
89 Contrary to what the applicant submits, the goods and services covered by the signs at issue do not have to be identical or similar for Article 8(5) of Regulation No 207/2009 to apply. The trade mark applied for must not be registered, on the basis of that provision, where it is to be registered for goods or services ‘which are not similar’ to those for which the earlier trade mark is registered (judgment of 27 October 2016, SPA VILLAGE, T‑625/15, not published, EU:T:2016:631, paragraph 50).
90 Furthermore, it must be pointed out that, although the primary function of a mark is unquestionably that of an ‘indication of origin’, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed by, inter alia, a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 35).
91 In the present case, it is the conflicting nature of the goods covered by the marks at issue that makes it possible to hold that there is a ‘risk of tarnishment’ of the image associated with the earlier mark which is registered in respect of cosmetic products. As the Board of Appeal correctly found, the fact that the mark applied for is to be used for cleaning products strengthens the likelihood that the relevant public will make a negative connection with the earlier marks, which have a reputation for cosmetics, thinking that the goods marketed under the earlier marks contain substances which are toxic or a danger to health.
92 The fourth plea must therefore be dismissed.
93 Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
Costs
94 In the judgment on appeal, the Court of Justice reserved the costs. It is therefore for the General Court to rule, in the present judgment, on all the costs relating to the various proceedings, in accordance with Article 219 of the Rules of Procedure.
95 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. As the applicant has been unsuccessful in relation to all its heads of claim, it must be ordered to pay the costs incurred by EUIPO and by the intervener before the General Court and the Court of Justice, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Groupe Léa Nature SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by the intervener before the General Court and the Court of Justice.
Berardis | Papasavvas | Spineanu-Matei |
Delivered in open court in Luxembourg on 8 June 2017.