JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark BI blue pigment – Earlier EU figurative mark Bi.cell – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑180/23,
L’Oréal, established in Paris (France), represented by T. de Haan and S. Vandezande, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Samar’t Pharma, SL, established in Vilamalla (Spain),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, R. Norkus and L. Spangsberg Grønfeldt, 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, L’Oréal, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 January 2023 (Case R 1102/2022-4) (‘the contested decision’).
Background to the dispute
2 On 16 November 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Hair preparations and treatments; Hair care preparations not for medical purposes; preparations for setting hair; hair coloring preparations; hair lighteners’.
4 On 12 February 2021, Samar’t Pharma, SL, 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 on the EU figurative mark, reproduced below, covering the following goods in Class 3: ‘Perfumery; Cosmetics; Essential oils; Hair lotion; Toiletries; Cleaning preparations for personal use; Beauty care cosmetics; Cosmetic masks; Beauty lotions; Cosmetic hair dressing preparations; Soaps; Dentifrices’:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 On 27 April 2022, the Opposition Division upheld the opposition.
8 On 23 June 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. In essence, it found that there was a likelihood of confusion having regard, first, to the identical nature of the goods at issue and, second, to the similarities resulting from the presence of the element ‘bi’ in the signs at issue, which were found to be visually similar to a below-average degree, phonetically similar at least to a below-average degree and conceptually similar to a low degree.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
12 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That single plea is based on two complaints, alleging, first, that the Board of Appeal did not carry out an overall examination of the signs at issue and, second, that it did not assess the likelihood of confusion globally.
13 EUIPO disputes the applicant’s arguments.
14 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
15 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).
16 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).
17 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).
18 In that regard, as a preliminary point, it should be noted that the Board of Appeal found that the goods concerned, referred to in paragraph 3 above, were everyday consumer goods aimed at the general public with an average level of attention and that it was necessary to focus the examination on the English-speaking part of that public within the European Union. It also found that the goods at issue were identical. The applicant does not dispute those assessments of the Board of Appeal and, moreover, there is nothing in the file capable of calling them into question.
19 By contrast, the applicant disputes the Board of Appeal’s analysis relating, first, to the similarity of the signs at issue and, second, to the likelihood of confusion.
The comparison of the signs
20 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).
21 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
22 In the present case, the Board of Appeal found that the signs at issue were visually similar to a below-average degree, phonetically similar at least to a below-average degree and conceptually similar to a low degree.
23 The applicant submits that the Board of Appeal’s findings are incorrect, in so far as they are based not on the overall impression created by the signs at issue, but solely on the element ‘bi’.
24 Therefore, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those marks carried out by the Board of Appeal.
The distinctive or dominant elements of the marks at issue
25 As regards the distinctive character of the elements making up the marks at issue, it must be pointed out that the higher or lower level of the distinctive character of the elements common to a mark applied for and an earlier mark is one of the relevant factors in the context of the assessment of the similarity of the signs at issue (judgments of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 37; of 8 June 2017, AWG v EUIPO – Takko (Southern Territory 23°48’25’’S), T‑6/16, not published, EU:T:2017:383, paragraph 30; and of 7 November 2017, Mundipharma v EUIPO – Multipharma (MULTIPHARMA), T‑144/16, not published, EU:T:2017:783, paragraph 34).
26 In that regard, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 7 November 2017, MULTIPHARMA, T‑144/16, not published, EU:T:2017:783, paragraph 35 and the case-law cited).
27 Furthermore, in assessing 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 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).
28 As regards the earlier mark, the Board of Appeal found, first of all, that it was composed of two English word elements, namely ‘bi’ and ‘cell’, separated by a full stop. Next, it noted that even though the term ‘bicell’ or ‘bi-cell’, considered as a whole, alluded to two cells, only a part of the relevant public with knowledge of the use of stem cells in the field of cosmetics would perceive it in that sense. However, a non-negligible part of that public would perceive it as a distinctive term devoid of specific meaning in relation to the goods concerned, especially since that term does not exist in English. Lastly, it noted, in essence, that neither of the two word elements was dominant, but that the first of them, namely the element ‘bi’, would retain an independent role in the global assessment of that mark and would attract consumers’ attention to a greater extent.
29 As regards the mark applied for, the Board of Appeal examined two potential interpretations of its first element; on the one hand, a first interpretation according to which that element would be understood as consisting of the letters ‘b’ and ‘i’ in upper case and, on the other hand, a second interpretation, according to which that element would be understood as consisting of the letters ‘b’ in upper case and ‘l’ in lower case. Following that examination, it found that that element would be understood by a non-negligible part of the public as consisting of the letters ‘b’ and ‘i’ in upper case. According to the Board of Appeal, the element ‘bl’ is difficult to pronounce and is not the common abbreviation for the word ‘blue’. Furthermore, even if it coincided with the first two letters of the expression ‘blue pigment’, that expression would be given less importance on account of its smaller size, its position in the lower part of the sign applied for and its descriptive indication of the hair care goods at issue, capable of giving a bluish tone. In view of that, the Board of Appeal also concluded that the element ‘bi’ would be perceived as an independent element and as the most distinctive and dominant element of the mark applied for.
30 In general, the applicant submits that the Board of Appeal based its analysis on the first element of the signs at issue, namely the element ‘bi’. That element was considered to be dominant and was isolated from the other elements, even though those elements were not negligible.
31 In particular, the applicant submits, first, that the Board of Appeal should not have made those assessments when examining the earlier mark, since it had previously found that its two elements were equally dominant visually and that a non-negligible part of the relevant public would perceive the term ‘bicell’ as a whole as a fanciful term. The applicant also claims that the Board of Appeal erred in finding that the element ‘bi’ would attract consumers’ attention solely on the ground that it was at the beginning of the signs at issue.
32 Second, the applicant does not dispute the dominant character of the first element of the mark applied for, but contests the assessment carried out by the Board of Appeal, according to which the letter ‘b’ in upper case and the letter ‘l’ in lower case would be recognised as the letters ‘b’ and ‘i’ in upper case. It argues that, since the expression ‘blue pigment’ is not negligible, it influences the way in which the letters ‘b’ and ‘l’ are seen, read and pronounced. The applicant adds, relying on dictionaries and websites, that, contrary to what the Board of Appeal found, the combination ‘bl’ is the most common and standard abbreviation for blue.
33 Third, the applicant submits that the element ‘bi’ common to the marks at issue, being commonly used in the cosmetics sector associated with words such as ‘serum’ or ‘phase’ to describe goods containing two types of composition and appearing in numerous registered trade marks, is devoid of distinctive character for the goods concerned or has only an extremely weak distinctive character.
34 EUIPO disputes the applicant’s arguments.
35 At the outset, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not find that any of the marks at issue contained negligible elements. First, it did not identify any dominant elements in the earlier mark and, second, it confined itself to noting the secondary, but not negligible, nature of the expression ‘blue pigment’ in relation to the dominant element ‘bi’ in the mark applied for. Those assessments are not disputed by the applicant.
36 As regards the earlier mark, it should be noted that the consumer might be inclined to split up rather short words into syllables where they contain a typographical element enabling their word elements to be separated (see, a contrario, with regard to the perception as an indivisible whole of a mark consisting of a fairly short word composed of two syllables which are not separated by a space, hyphen or other typographical element, judgment of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑698/17, not published, EU:T:2019:524, paragraph 64). There is therefore nothing to prevent the two word elements of the earlier mark, which are separated by a full stop, from being disassociated by the relevant public and thus from being perceived as two independent word elements. It follows that the Board of Appeal was right to find that the element ‘bi’ retains an independent role in the earlier mark.
37 That assessment is not called into question either by the fact that there is no dominant element in the earlier mark or by the possibly fanciful nature of the term ‘bicell’. It has already been held that a word sign composed of two word elements cannot be regarded as an indivisible unit on the sole ground that it is a fanciful term, with no conceptual connotation as a whole (see, to that effect, judgment of 20 September 2011, Dornbracht v OHIM – Metaform Lucchese (META), T‑1/09, not published, EU:T:2011:495, paragraph 43), especially since, in the present case, the two word elements are separated by a full stop.
38 As regards the mark applied for, the Board of Appeal did not make an error of assessment in finding that a non-negligible part of the relevant public might perceive its first element as consisting of the letters ‘b’ and ‘i’ in upper case, given that in the typeface used the letter ‘l’ in lower case is visually very similar to the letter ‘i’ in upper case. Even assuming that the element ‘bl’ is the common abbreviation of the word ‘blue’, the fact remains that there is no indication that the average consumer tends to abbreviate that word, which is composed of only one syllable.
39 The presence of the words ‘blue pigment’ does not alter that assessment. While it is true that elements of a mark may influence the way in which the consumer perceives other elements of that mark, the same is not necessarily true where, as in the present case, the words ‘blue pigment’ are secondary and the relevant public displays only an average level of attention. In order to draw an immediate link between the elements of the mark applied for, the consumer would have to engage in the cognitive process of noticing the words ‘blue pigment’, focus his or her attention on the first of those words, remember the first two letters, and then make an effort to draw a link between those two letters and the first element of the sign applied for. Such a process requires an amount of time for reflection which is hard to reconcile with the approach of the consumer seeking to identify easily and quickly the commercial origin of the goods (see, to that effect, judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraphs 32 and 33), also taking into account the similarity between the lower-case letter ‘l’ and the upper-case letter ‘i’ in the present case (see paragraph 38 above).
40 Furthermore, contrary to what the applicant claims, the element ‘bi’ retains a distinctive character in both of the marks at issue. It is true that the applicant submitted, in its observations before the Opposition Division, eight examples in which that element was used in the cosmetics sector in the European Union associated with the words ‘serum’, ‘phase’ or ‘moisture’. Nevertheless, apart from the fact that that element is used in different configurations in those examples, it cannot be inferred from such specific examples, taking into account the extent, size and diversity of the cosmetics sector, that the element ‘bi’ no longer has distinctive character in that sector. The applicant thus merely refers to the registration by EUIPO of 1 094 marks beginning with ‘bi’ and covering goods in Class 3 without providing further details relating thereto. Apart from the fact that the applicant is relying on all those examples for the first time before the Court, it has not shown that one of those signs was similar to the signs at issue or that one of those marks had acquired a reputation which could reduce the distinctive character of the element ‘bi’ in the signs at issue. The mere fact that trade marks in the class of goods covered in the present case contain the element ‘bi’, even if it were established, is not sufficient to confirm that the distinctive character of that element has been weakened because of its frequent use in the field concerned (see, to that effect, judgment of 16 September 2009, Hipp & Co v OHIM – Laboratorios Ordesa (Bebimil), T‑221/06, not published, EU:T:2009:330, paragraph 59 and the case-law cited).
41 It is in the light of those assessments that it is necessary to examine whether the signs in question have visual, phonetic and conceptual similarities.
The visual comparison
42 In finding that a non-negligible part of the relevant public perceived the letters ‘b’ and ‘i’ in the two signs at issue and that the other word and figurative elements were not sufficient to rule out similarity, the Board of Appeal concluded that there was a below-average degree of visual similarity.
43 The applicant disputes that finding. It submits that if the Board of Appeal had analysed the marks at issue as a whole, it should have found that there was no visual similarity on account of the differences in their composition and presentation.
44 EUIPO disputes the applicant’s arguments.
45 Contrary to what the applicant claims, the Board of Appeal cannot be criticised for not having carried out an overall visual comparison of the signs at issue. It is true, as the Board of Appeal pointed out, that the signs coincide only in their first element, namely the element ‘bi’, the other word elements of which each of those signs consists, namely ‘cell’ and ‘blue pigment’, being different. However, the element ‘bi’ constitutes the dominant element of the mark applied for and retains an independent character in the earlier mark, since it may be perceived as being separated from the element ‘cell’ (see paragraph 36 above). In addition, the typeface of the two marks at issue is very similar, if not identical.
46 It follows from the foregoing that the Board of Appeal did not make an error of assessment in finding that the consistency of the element ‘bi’ was sufficient to confer on the signs at issue a below-average degree of visual similarity.
The phonetic comparison
47 The Board of Appeal found that the consumer would pronounce the first syllable of the two marks at issue in the same way. It also found that that syllable was the main element to which the consumer would direct his or her attention, particularly as regards the mark applied for, in respect of which it was likely to be the only element pronounced on account of its dominant character, the length of the mark and the descriptive character of the expression ‘blue pigment’. Consequently, the Board of Appeal found that the signs at issue were phonetically similar at least to a below-average degree.
48 The applicant disputes those findings of the Board of Appeal. It argues that there is no reason to believe that the public will pronounce only the first element of the mark applied for and thus submits that that element will be pronounced like the letters ‘b’ and ‘l’.
49 EUIPO disputes the applicant’s arguments.
50 In the first place, contrary to what the applicant claims, it is possible that a non-negligible part of the relevant public will not pronounce the words ‘blue pigment’ in the mark applied for. Consumers might tend to abbreviate signs composed of several word elements (see, to that effect, judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 75), more specifically where, as in the present case, one of those elements is descriptive and represented in smaller characters (see, to that effect, judgment of 15 September 2021, Freshly Cosmetics v EUIPO – Misiego Blázquez (IDENTY BEAUTY), T‑688/20, not published, EU:T:2021:567, paragraph 51). As regards the way in which the public will pronounce the first element of the mark applied for, since it has already been established, in paragraphs 38 and 39 above, that a non-negligible part of the relevant public might perceive the letters ‘b’ and ‘i’ in it instead of ‘b’ and ‘l’, it can be considered that that public will pronounce it as ‘bi’.
51 In the second place, it cannot be ruled out that the relevant public will pronounce the earlier mark in its entirety. That is not, however, such as to rule out the phonetic similarity resulting from the fact that the first element in the two signs at issue is the same.
52 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding, in essence, that the marks at issue have a below-average degree of phonetic similarity.
The conceptual comparison
53 In the first place, the Board of Appeal found that the prefix ‘bi’, at the beginning of the two marks at issue, meant ‘two’ or ‘dual’. In the second place, it found that the words ‘blue pigment’ at the end of the mark applied for were understood as a characteristic of the goods and therefore had only a moderate impact on the conceptual comparison. Furthermore, in combination with the word ‘bi’, they had no known meaning. In the third place, according to the Board of Appeal, the word ‘cell’ at the end of the earlier mark, associated with the word ‘bi’, could be recognised by a part of the relevant public as an allusion to ‘two cells’ or to ‘double cells’. Nevertheless, the Board of Appeal found that, for a non-negligible part of that public, that word would not have a known meaning in relation to the goods concerned. Consequently, it concluded that those marks were conceptually similar to a low degree.
54 The applicant claims that the comparison is again incorrect, since only the first two letters of each of the marks at issue were taken into account and the very different meaning of the words ‘blue pigment’ and ‘cell’ were ignored; a meaning which should have led the Board of Appeal to conclude that there was a complete lack of conceptual similarity. According to the applicant, the words ‘blue pigment’ have a highly evocative content, despite their descriptive character, and would be remembered by the consumer given that the colour blue is manifestly extravagant as regards hair colouring.
55 EUIPO disputes the applicant’s arguments.
56 Contrary to what the applicant claims, the Board of Appeal compared the signs at issue as a whole. In that regard, it should be noted that the element ‘bi’, retaining an independent role in the earlier mark (see paragraph 36 above) and in the mark applied for, since it constitutes its dominant element, may have the effect of making the two marks conceptually closer. In view of the descriptive character of the element ‘blue pigment’ in the mark applied for, it may be concluded that the relevant public will not tend to remember it, irrespective of whether the colour blue is extravagant as regards hair colouring. Consequently, the differences resulting from the different meanings of the elements ‘cell’ and ‘blue pigment’ do not make it possible to rule out the existence of a low degree of conceptual similarity.
57 The Board of Appeal was therefore correct in finding that there was a low degree of conceptual similarity.
The global assessment of the likelihood of confusion
58 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).
59 In the present case, the Board of Appeal found that, in view of the identity of the goods concerned and the similarities between the signs at issue on account of their common element, which had an independent distinctive role and would be perceived as visually separated in the two marks at issue, there was a likelihood of confusion on the part of the relevant public. More specifically, it found that that public might perceive that the sign applied for concerned a new line of goods offered by the proprietor of the earlier mark or by an undertaking economically linked to it.
60 The applicant submits, in the first place, that the conceptual differences between the signs at issue should have led the Board of Appeal to find that the overall impression which they create is different. In the second place, it criticises the Board of Appeal for having referred to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), despite the fact that that judgment concerns a situation in which the earlier mark was entirely included in the contested sign. In the third place, the applicant submits that, in order to assess a likelihood of confusion in the context of identical cosmetic and hair care goods, which fall within a very broad category of goods, those signs must have a sufficiently high degree of similarity. Nevertheless, according to the applicant, that is not the case here, since the signs, assessed as a whole, display conceptual, visual and phonetic differences.
61 EUIPO disputes the applicant’s claims.
62 First, according to the case-law, the global assessment of the likelihood of confusion implies that conceptual differences between the signs at issue can counteract phonetic and visual similarities between them, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 74 and the case-law cited).
63 In the present case, it is apparent from paragraph 56 above that the signs at issue are not different, but have a low degree of conceptual similarity. Furthermore, as regards the meaning of those signs, first, the parties agree that the earlier mark could simply allude to the concept of ‘two cells’ and the applicant does not dispute that a non-negligible part of the relevant public might perceive that mark as a distinctive term with no specific meaning. In that context, the meaning of the earlier mark cannot be considered to be immediately perceptible. Second, as regards the mark applied for, although it is true that the relevant public is able to attribute a meaning to the expression ‘blue pigment’, that concept appears in a secondary element of a sign the dominant element of which conveys another meaning. Consequently, the meaning of the mark applied for is also not clear and specific. It follows that, contrary to what the applicant claims, the case-law cited in paragraph 62 above is not applicable in the present case.
64 Second, as regards the applicant’s argument concerning the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), it should be noted that the fact that an element of the sign applied for does not in itself constitute the earlier sign does not prevent it from retaining an independent distinctive role in the sign applied for (see, to that effect, judgment of 15 February 2023, Topcart v EUIPO – Carl International (TC CARL), T‑8/22, not published, EU:T:2023:70, paragraph 69). In any event, even if the Board of Appeal had wrongly applied the case-law arising from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), such a circumstance is not capable of calling into question the lawfulness of the contested decision, which is based, in essence, on the independent role of the element ‘bi’ in the earlier mark (see paragraph 36 above) and in the mark applied for since it is its dominant element.
65 Third, it should be borne in mind that, according to the case-law, the principle of the interdependence of the factors to be taken into account for the purposes of assessing the likelihood of confusion should not be applied mechanically. A mechanical application of that principle does not ensure a correct global assessment of the likelihood of confusion (see, to that effect, judgment of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraph 95). It cannot, however, be inferred from this, as the applicant submits, that, in order to exclude a likelihood of confusion in the case of identical cosmetic and hair care goods, the marks must necessarily have a greater similarity than that presented by the marks at issue.
66 It should be noted that the goods concerned are primarily perceived visually and that, in the cosmetics and hair care sector, the use of sub-brands, namely the use of signs that derive from a principal mark and which share with it a common element, is frequent (see, to that effect, judgment of 27 February 2015, Spa Monopole v OHIM – Olivar Del Desierto (OLEOSPA), T‑377/12, not published, EU:T:2015:121, paragraph 45 and the case-law cited). Taking the view that, in the two marks at issue, the consumer would perceive the element ‘bi’ as being visually separated from the other elements, it is conceivable, as the Board of Appeal rightly pointed out, that the relevant public may regard the goods covered by those marks as belonging, admittedly, to two distinct lines of goods, but nevertheless coming from the same undertaking.
67 In those circumstances, it cannot be concluded that the differences between the signs at issue, resulting from the elements ‘cell’ and ‘blue pigment’, are sufficient to rule out a likelihood of confusion.
68 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims is unfounded, the action must be dismissed in its entirety.
Costs
69 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
70 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders L’Oréal and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Marcoulli | Norkus | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci | | S. Papasavvas |