ORDER OF THE GENERAL COURT (Ninth Chamber)
22 September 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark prımagran – Earlier EU figurative mark PRIMA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Article 27(2) of Delegated Regulation (EU) 2018/625 – Article 95(1) of Regulation 2017/1001 – Prohibition of reformatio in pejus – Action manifestly lacking any foundation in law)
In Case T‑624/21,
Primagran sp. z o.o., established in Stegna (Poland), represented by E. Jaroszyńska-Kozłowska, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Compagnie des gaz de pétrole Primagaz, established in Paris (France), represented by S. Herrburger, lawyer,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of deliberation, of M.J. Costeira (Rapporteur), President, T. Perišin and P. Zilgalvis, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
makes the following
Order
1 By its action under Article 263 TFEU, the applicant, Primagran sp. z o.o., seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 July 2021 (Case R 2486/2020-4) (‘the contested decision’).
I. Background to the dispute
2 On 12 April 2019, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to 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).
3 Registration as a mark was sought for the following figurative sign:
4 The goods and services in respect of which registration was sought are in, inter alia, Classes 11 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 11: ‘Sinks, including sinks of granite; plugs of metal for sinks; kitchen sink sprayers; heaters for sink water; wall-mounted spouts for sinks; flexible pipes being parts of sink plumbing installations; taps [faucets]; taps for washstands; bath taps; shower taps; mixer taps for water pipes’;
– Class 35: ‘Wholesaling and retailing of sinks; wholesaling and retailing of kitchen and bathroom fittings, pots and work surfaces’.
5 The trade mark application was published in European Union Trade Marks Bulletin No 110/2019 of 13 June 2019.
6 On 12 September 2019, the intervener, Compagnie des gaz de pétrole Primagaz, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods and services covered by that mark.
7 The opposition was based on the following earlier marks:
– the EU figurative mark reproduced below, registered on 30 August 2019 under No 18024541, inter alia for goods in Class 11 and corresponding to the following description: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Air conditioning apparatus and installations; Freezers; Electric torches; Electric coffee urns; Cookers; Lighting apparatus for vehicles; Heating or air conditioning installations for vehicles; Air and water purifying apparatus and machines; Sterilising installations; Apparatus and installations for the treatment and storage of gas; Gas cleaners and purifiers; Regulating and safety accessories for gas apparatus and gas pipes; Pressure regulators for controlling the flow of fluids and gases’:
– the EU figurative mark reproduced below, registered on 30 August 2019 under No 18025770, for the same goods and services as EU figurative mark No 18024541:
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
9 On 30 October 2020, the Opposition Division upheld the opposition in part, in so far as it concluded, on the basis of EU trade mark No 18024541, that there was a likelihood of confusion at least for the Spanish-speaking public as regards all the goods and services referred to in paragraph 4 above.
10 On 29 December 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11 By the contested decision, the Fourth Board of Appeal of EUIPO annulled in part the decision of the Opposition Division by allowing registration of the mark applied for in respect of the services ‘wholesaling and retailing of pots and work surfaces’ in Class 35, on the ground that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in respect of those services.
12 By contrast, as to the remainder, the Board of Appeal dismissed the appeal, confirming the Opposition Division’s decision in so far as it had upheld the opposition in respect of the goods ‘sinks, including sinks of granite; plugs of metal for sinks; kitchen sink sprayers; heaters for sink water; wall-mounted spouts for sinks; flexible pipes being parts of sink plumbing installations; taps [faucets]; taps for washstands; bath taps; shower taps; mixer taps for water pipes’ in Class 11, and in respect of the services ‘wholesaling and retailing of sinks; wholesaling and retailing of kitchen and bathroom fittings’ in Class 35.
13 In essence, the Board of Appeal, taking into account the identity and average similarity of the goods and services at issue, the average degree of visual similarity and the above-average degree of phonetic similarity, and the normal distinctive character of the earlier mark No 18024541, concluded that there was a likelihood of confusion for those goods and services, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
II. Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
15 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
III. Law
16 Under Article 126 of the Rules of Procedure of the General Court, where the action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
17 In the present case, the Court, since it considers that it has sufficient information from the documents before it, has decided, pursuant to Article 126 of the Rules of Procedure, to give a decision on the action without taking further steps in the proceedings, even though one of the parties has requested a hearing (see, to that effect, orders of 7 June 2016, Beele Engineering v EUIPO (WE CARE), T‑220/15, not published, EU:T:2016:346, paragraph 12 and the case-law cited, and of 27 November 2018, CMS Hasche Sigle v EUIPO (WORLD LAW GROUP), T‑756/17, not published, EU:T:2018:846, paragraph 11).
A. Admissibility of the arguments based on trade mark No 18025770
18 EUIPO contends that the applicant’s arguments concerning EU figurative mark No 18025770 are inadmissible and, in any event, ineffective. In that regard, EUIPO claims, in essence, that the Board of Appeal, in the contested decision, based the refusal to register the mark applied for in respect of the goods and services referred to in paragraph 4 above, with the exception of ‘wholesaling and retailing of pots and work surfaces’, exclusively on a comparison of the mark applied for with the earlier mark No 18024541.
19 In that regard, it should be borne in mind that the legality of the Board of Appeal’s decision must be assessed solely on the basis of the factual and legal findings in the contested decision and the adequacy of its statement of reasons (judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR), T‑84/20, not published, EU:T:2021:555, paragraph 31).
20 Moreover, it is not for the Court to adjudicate on an issue which was not examined by the Board of Appeal (see judgment of 15 July 2020, Itinerant Show Room v EUIPO – Save the Duck (FAKE DUCK), T‑371/19, not published, EU:T:2020:339, paragraph 16 and the case-law cited).
21 Article 188 of the Rules of Procedure also provides that the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal.
22 In the contested decision, since the Board of Appeal based its refusal of the application for registration of the mark applied for exclusively on a comparison of that mark with the earlier mark No 18024541, the arguments in the application concerning the earlier mark No 18025770 are therefore inadmissible.
B. Substance
23 In support of the action, the applicant relies on three pleas in law. The first plea in law alleges infringement of Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and of Article 95(1) of Regulation 2017/1001. The second plea in law alleges breach of the principle of the prohibition of reformatio in pejus. The third plea in law alleges infringement of Article 8(1)(b) of Regulation 2017/1001.
24 Given that the first and second pleas in law overlap in so far as the applicant submits that the Board of Appeal should not have changed the assessment of the similarity and the degree of similarity of the goods and services in Class 11 to its disadvantage, the Court considers it appropriate to deal with them together.
1. The first plea in law and the second plea in law, alleging infringement of Article 27(2) of Delegated Regulation 2018/625 and of Article 95(1) of Regulation 2017/1001, and breach of the principle of the prohibition of reformatio in pejus
25 The applicant claims, in essence, first, that it follows from the wording of Article 27(2) of Delegated Regulation 2018/625 that the Board of Appeal should not have examined the degree of similarity between the goods at issue in Class 11 and, secondly, that there has been a breach of the principle of the prohibition of reformatio in pejus, since the findings of the Board of Appeal concerning the goods and services at issue are less favourable to the applicant than the findings of the Opposition Division in respect of the same goods and services.
26 EUIPO and the intervener dispute the applicant’s arguments.
27 As a preliminary point, it should be noted that there is functional continuity between the different departments of EUIPO on the one hand, and the Boards of Appeal on the other. It follows from that functional continuity that, in the review of decisions taken by the departments of EUIPO hearing the application at first instance that the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal. The review undertaken by the Boards of Appeal is not limited to the lawfulness of the contested decision, but, by virtue of the devolutive effect of the appeal proceedings, it requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time. Thus, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal before it, the Board of Appeal is called upon to carry out a full re-examination of the merits of the opposition, in both law and fact (see judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).
28 It should also be borne in mind that, under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, the Board of Appeal’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
29 Article 27(2) of Delegated Regulation 2018/625 provides as follows:
‘In inter partes proceedings, the examination of the appeal … shall be restricted to the grounds invoked in the statement of grounds … Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of [Regulation 2017/1001] having regard to the facts, evidence and arguments presented by the parties.’
30 It is in the light of those considerations that the Court must examine whether the Board of Appeal acted correctly in examining the similarity of the goods and services at issue in Classes 11 and 35.
31 First, in the present case, the applicant submits that the Board of Appeal was not entitled to examine the Opposition Division’s findings as to the similarity of the goods and services at issue, given that the comparison had already been made by the Opposition Division.
32 As noted in paragraph 27 above, the review undertaken by the Board of Appeal is not limited to the lawfulness of the contested decision, but requires a reappraisal of the dispute as a whole, since the Board of Appeal is required to base its decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the Opposition Division or in the appeal.
33 Therefore, the Board of Appeal, contrary to what the applicant claims, was justified in examining the similarity of the goods and services at issue.
34 Secondly, the applicant submits that the Board of Appeal was not entitled to re-examine the Opposition Division’s findings as to the similarity of the goods at issue, since those findings had not been disputed by the applicant in its appeal before the Board.
35 Although under Article 95(1) of Regulation 2017/1001 the Board of Appeal’s examination is to be restricted to the facts, evidence and arguments provided by the parties, it nevertheless follows from Article 27(2) of Delegated Regulation 2018/625 that matters of law not raised by the parties may be examined by the Board of Appeal where it is necessary to resolve them in order to ensure a correct application of Regulation 2017/1001 having regard to the facts, evidence and arguments provided by the parties.
36 It should be noted that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered (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). As EUIPO contends, the Board of Appeal was required, in order to ensure the correct application of Article 8(1)(b) of Regulation 2017/1001 relied on by the applicant, to examine the similarity and the degree of similarity of the goods at issue in Class 11, even in the absence of specific arguments put forward by the parties in relation to the latter aspect.
37 Consequently, the Board of Appeal did not err in law in re-examining the similarity of the goods at issue in Class 11.
38 Thirdly, the applicant submits, in essence, that the comparison of goods and services is a matter of fact and not a matter of law.
39 In that regard, it is apparent from settled case-law that the criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are part of the matters of law submitted for examination by EUIPO (see judgment of 3 June 2015, Lithomex v OHIM – Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 39 and the case-law cited).
40 In the present case, the applicant requested the Board of Appeal to examine the Opposition Division’s finding that there was a likelihood of confusion, as regards, inter alia, the goods and services at issue. The appeal therefore concerned the criteria for applying a relative ground for refusal, in other words, a matter of law and not a matter of fact. Accordingly, the Board of Appeal did not err in law in examining the similarity of the contested goods and services.
41 Fourthly, the applicant claims that the review, in the contested decision, of the similarity of the goods and services at issue in Classes 11 and 35 could not lead to conclusions less favourable to it than those drawn from the Opposition Division’s decision, on pain of breaching the principle of the prohibition of reformatio in pejus. Since the degree of similarity of the goods and services compared has a significant impact on the global assessment of the likelihood of confusion and, consequently, on the outcome of the proceedings, the applicant argues that it cannot be ruled out that the Board of Appeal would have reached a different conclusion if it had not changed the assessment of the degree of similarity of the goods and services compared.
42 As regards the principle of the prohibition of reformatio in pejus, even on the assumption that such a principle may be invoked in the context of reviewing the lawfulness of a decision of a Board of Appeal of EUIPO, it should be noted that, by the contested decision, the Board of Appeal upheld the applicant’s appeal in part by annulling in part the decision of the Opposition Division. Therefore, since the contested decision granted the applicant’s claims in part, the applicant is not, following that decision, in a less favourable legal position than before the appeal was brought (see, to that effect, judgment of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraphs 26 to 28). Therefore, and in any event, the Board of Appeal did not breach the principle of the prohibition of reformatio in pejus.
43 It follows from all the foregoing that the Board of Appeal cannot be criticised for having carried out a reappraisal of the degree of similarity of the goods and services at issue in Classes 11 and 35. The first and second pleas in law must therefore be rejected as manifestly unfounded.
2. The third plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
44 The applicant submits, in essence, that the Board of Appeal made an error of assessment in finding that there was, in the present case, a likelihood of confusion. The applicant disputes, in particular, the findings of the Board of Appeal relating to the assessment of the level of attention of the relevant public, the comparison of the goods and services, the assessment of the distinctive character of the elements of the marks at issue, the comparison of the signs at issue, the assessment of the distinctive character of the earlier mark and the global assessment of the likelihood of confusion.
45 EUIPO and the intervener dispute the applicant’s arguments.
46 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 trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
47 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. 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).
48 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).
49 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, 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).
(a) The relevant public
50 The applicant submits that the Board of Appeal made an error of assessment in finding that the level of attention of the relevant public at large is average. It argues, in that regard, first, that the goods in Class 11 are purchased rarely as there is no need to replace them frequently and, secondly, that consumers have knowledge of the market. Therefore, according to the applicant, the level of attention of the relevant public should be considered to be high.
51 EUIPO and the intervener dispute the applicant’s arguments.
52 As a preliminary point, it should be noted that, according to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
53 In the present case, the Board of Appeal considered, in paragraphs 24 to 26 of the contested decision, that the relevant public consists, in the light of the goods and services at issue, of professionals and the public of the European Union at large. It stated, however, that the likelihood of confusion would be assessed with regard to the Spanish-speaking public, since that public is the most prone to confusion in the present case.
54 Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.
55 The Board of Appeal also stated, in paragraph 52 of the contested decision, that the level of attention of the public at large is average, since the goods at issue in Class 11 may be acquired by end consumers, and that, even though those goods are not purchased on a daily basis, they are not very expensive. The Board of Appeal also found that the level of attention of the professional public is enhanced.
56 The applicant disputes that finding of the Board of Appeal and submits that the level of attention of the relevant public should be considered to be high.
57 In the present case, it should be borne in mind that the goods in Class 11 at issue are ‘sinks, including sinks of granite; plugs of metal for sinks; kitchen sink sprayers; heaters for sink water; wall-mounted spouts for sinks; flexible pipes being parts of sink plumbing installations; taps [faucets]; taps for washstands; bath taps; shower taps; mixer taps for water pipes’.
58 It should be noted, as EUIPO observed, that those goods can be standard models which are not necessarily expensive and do not have specific technical features requiring knowledge, experience and involvement in acquiring them. Moreover, the installation of those goods does not necessarily require the assistance of a professional.
59 It follows from the foregoing considerations that the Board of Appeal did not make an error of assessment in finding that the level of attention of the public at large is average.
60 Where the relevant public consists of two categories of consumers, each with a different level of attention, the public with the lowest level of attention must be taken into consideration (judgment of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO), T‑31/20, not published, EU:T:2021:217, paragraph 57). Therefore, the Board of Appeal also acted correctly in taking into account the public with the lowest level of attention, namely the public at large, whose level of attention is average, in order to assess whether there is a likelihood of confusion.
(b) Comparison of the goods and services at issue
61 The applicant submits that the Board of Appeal made an incorrect comparison of the goods and services at issue.
62 As regards the goods in Class 11, the applicant maintains that the Board of Appeal should not have examined the similarity of the goods at issue and should not have changed the Opposition Division’s assessment of those goods to its disadvantage. Therefore, the applicant submits that the goods at issue in Class 11 should not have been considered to be identical.
63 As regards the services in Class 35, the applicant submits that those services covered by the mark applied for are not similar to the goods covered by the earlier mark, and that the Board of Appeal made an error of assessment in finding that there was a similarity between the services covered by the mark applied for, namely, inter alia, ‘wholesaling and retailing of sinks and of kitchen and bathroom fittings’ and the goods protected by the earlier mark, namely, inter alia, ‘apparatus for cooking, refrigerating, water supply and sanitary purposes’. The applicant maintains that no similarity can be assumed if the wholesaling or retailing of particular items is compared with an entire category of goods, even if that category includes some of those items.
64 EUIPO disputes the applicant’s arguments.
65 As a preliminary point, it should be noted that, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
66 It should also be noted that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
(1) The goods in Class 11
67 In that regard, it is sufficient to note that the applicant merely asserts that the Board of Appeal was entitled neither to re-examine the degree of similarity of the goods and services at issue nor to carry out a reappraisal. As stated in paragraph 43 above, the Board of Appeal did not err in law in re-examining the similarity and the degree of similarity, inter alia, of the goods at issue in Class 11.
68 It follows that the applicant’s argument must be rejected.
69 In the present case, the Board of Appeal concluded, in paragraph 32 of the contested decision, that the goods ‘sinks, including sinks of granite; plugs of metal for sinks; kitchen sink sprayers; heaters for sink water; wall-mounted spouts for sinks; flexible pipes being parts of sink plumbing installations; taps [faucets]; taps for washstands; bath taps; shower taps; mixer taps for water pipes’ in Class 11 and covered by the mark applied for are all included in the broader specification of the goods ‘apparatus for water supply and sanitary purposes’ covered by the earlier mark and included in Class 11, and that, therefore, those goods are identical.
70 That finding of the Board of Appeal, which, moreover, is not disputed by the applicant, must be upheld.
(2) The services in Class 35
71 In the present case, in paragraph 34 of the contested decision, the Board of Appeal concluded that the services ‘wholesaling and retailing of sinks and of kitchen and bathroom fittings’ in Class 35 covered by the mark applied for are similar to an average degree to the goods ‘apparatus for cooking, refrigerating, water supply and sanitary purposes’ in Class 11 covered by the earlier mark, on account of their complementary character. The Board of Appeal also noted that the ‘retail and wholesale of sinks’ as well as of ‘kitchen and bathroom fittings’ could be carried out by the same undertakings as those which produce those goods.
72 It should be noted in that regard that the principles applicable to the comparison of the goods also apply to the comparison between the goods and services. It is true that, by their very nature, goods are generally different from services, but it nevertheless remains the case that they can be complementary or that the services may have the same purpose or use as the goods, and thus compete with each other. It follows that, in certain circumstances, goods and services may be found to be similar (see judgment of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 105 and the case-law cited). In particular, it follows from the case-law that there is a similarity between goods and the retail services which relate to those goods (see judgment of 20 January 2021, Apologistics v EUIPO – Peikert (discount-apotheke.de), T‑844/19, not published, EU:T:2021:25, paragraph 39 and the case-law cited).
73 In the present case, as concluded in paragraph 70 above, the goods in Class 11 of the earlier mark and the goods in the same class of the mark applied for are identical. It should be noted that the services in Class 35 covered by the mark applied for relate to goods in Class 11 covered by the earlier mark. Therefore, it follows from the case-law referred to in paragraph 72 above that there is a similarity between the services relating to wholesaling and retailing of sinks and of kitchen and bathroom fittings, and the goods, found to be identical, in Class 11 covered by the marks at issue. Furthermore, it must be pointed out, as the Board of Appeal observed, that ‘retail and wholesale of sinks’ as well as of ‘kitchen and bathroom fittings’ could be carried out by the same undertakings as those which produce those goods.
74 The Board of Appeal did not therefore make an error of assessment in concluding that there is an average degree of similarity between the goods in Class 11 covered by the earlier mark and the services in Class 35 covered by the mark applied for.
(c) Comparison of the signs at issue
75 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).
76 In the present case, the marks to be compared are the following:
– the mark applied for is the figurative mark;
– the earlier mark is the figurative mark
.
77 In paragraph 41 of the contested decision, the Board of Appeal noted that the earlier mark is a figurative mark consisting of the word element ‘prima’, written in black capital letters, in a standard typeface, preceded by a circular figurative element in red, which may be perceived as resembling a power button. The figurative element, which is perceived as a fanciful device, plays a secondary role in the overall impression taking into account that consumers tend to focus on the word element of a mark and that the figurative element will be perceived as merely decorative.
78 In paragraph 45 of the contested decision, the Board of Appeal noted that the mark applied for is a figurative mark consisting of the word element ‘primagran’ written in slightly stylised lower-case letters, which is preceded by a three-part black figurative device. It found that the figurative element plays a secondary role taking into account that consumers tend to focus on the word element of a mark, and that the figurative element will be perceived as merely decorative.
(1) The dominant and distinctive elements of the marks at issue
79 The applicant claims, first, that the word element ‘prima’ does not only mean ‘female cousin’ or ‘bonus payment’ in Spanish, but also ‘foremost’, ‘first’, ‘best’ or ‘principal’, and therefore has a laudatory connotation in view of those multiple meanings and its etymology. The applicant maintains that the Spanish language is derived from a dialect of spoken Latin, and that it also cannot be assumed that the relevant public understands only the official language of the Member State in question. It submits that the word ‘prima’ is part of commonly used expressions, in particular ‘prima donna’, ‘prima ballerina’, ‘prima ballerina assoluta’, ‘prima facie’, ‘primo, secundo’, ‘primus inter pares’ and ‘primum non nocere’, which refer to something that is ‘first’ and/or ‘the best’.
80 Secondly, the applicant disputes the importance attached by the Board of Appeal to the judgment of 28 April 2021, Primart v EUIPO – Bolton Cile España (PRIMART Marek Łukasiewicz) (T‑584/17 RENV, not published, EU:T:2021:231). Furthermore, the applicant submits that there are numerous trade mark registrations containing the word ‘prima’ which demonstrate that it is a common word which will not be perceived by the relevant public as an indication of the commercial origin of the goods and services at issue. The applicant thus maintains that the element ‘prima’ has a weak, or even very weak, distinctive character for the Spanish-speaking part of the public, which, in the present case, has an influence on the outcome of the global assessment of the likelihood of confusion.
81 Thirdly, the applicant disputes the Board of Appeal’s finding that the figurative elements of the marks at issue play a secondary role in the overall impression created by those marks. According to the applicant, even if the figurative elements do not enjoy a highly distinctive character when assessing the marks individually, they nevertheless have a much greater and significant impact on the assessment of the similarity of the marks, since the word element of the earlier mark has a weak distinctive character and the graphic elements of the marks compared are completely different. It submits that, in the present case, the difference in the graphic elements of the marks at issue cannot go unnoticed by the relevant public, given that those elements are placed on the left side of the marks at issue and on the same line as the word elements. For those reasons, it argues, the graphic elements clearly differentiate the marks at issue.
82 EUIPO and the intervener dispute the applicant’s arguments.
83 As a preliminary point, it should be noted that 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).
84 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).
85 For the purpose of 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 (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).
86 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 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited).
87 In the present case, as regards the mark applied for, in paragraph 45 of the contested decision, the Board of Appeal found that the word ‘primagran’ as a whole has no meaning for the relevant Spanish-speaking public and forms the distinctive and dominant part of the mark.
88 As regards the earlier mark, in paragraph 41 of the contested decision, the Board of Appeal upheld the Opposition Division’s finding that, in Spanish, the word ‘prima’ means ‘female cousin’ or ‘bonus payment’, and found that the word element ‘prima’ has no laudatory connotation for the relevant Spanish-speaking public. The Board of Appeal found that that element is perceived first and foremost as a mere ordinal numerical adjective, which does not immediately convey an idea of excellence. It thus concluded, in paragraph 43 of the contested decision, that the word element ‘prima’ forms a distinctive and dominant part of the earlier mark, at least for the relevant Spanish consumers.
89 In that respect, first, as regards the figurative elements of the signs at issue, it should be borne in mind that, according to settled case-law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgments of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37, and of 9 February 2017, zero v EUIPO – Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67, paragraph 33).
90 It is true that it is not apparent from the case-law that, in the case of composite marks comprising both graphic and word elements, the word elements must systematically be regarded as dominant (judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 55). In certain cases, in a composite sign, the figurative element may therefore rank at least equally with the word element (see judgment of 12 May 2021, Metamorfoza v EUIPO – Tiesios kreivės (MUSEUM OF ILLUSIONS), T‑70/20, not published, EU:T:2021:253, paragraph 58 and the case-law cited).
91 However, it should be noted that, in the present case, neither the position nor the size of the figurative elements at issue is such as to endow them with a dominant character within the signs. As the Board of Appeal correctly pointed out in paragraphs 41 and 45 of the contested decision, that is all the more true given that they are merely decorative elements to which the case-law does not generally attribute distinctive character (see, to that effect, judgment of 20 January 2021, Enoport v EUIPO – Miguel Torres (CABEÇA DE TOIRO), T‑811/19, not published, EU:T:2021:23, paragraph 38). Furthermore, the applicant has not put forward any arguments to show that the figurative element is more distinctive than the word element.
92 Secondly, as regards the word element ‘prima’ of the marks at issue, it should be noted, first of all, that the applicant does not dispute that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ in Spanish, as is apparent from paragraph 41 of the contested decision.
93 Next, as regards the alleged laudatory connotation of the word ‘prima’ in Spanish, it should be noted that the word ‘prima’ has a clear laudatory meaning only in some languages of the European Union, in particular in German and Dutch. By contrast, in many other languages of the European Union, while it is true that the element at issue exists as a word or refers to existing words, those words do not have a laudatory meaning such that the distinctive character of that word element is weakened (judgment of 24 September 2015, Primagaz v OHIM – Reeh (PRIMA KLIMA), T‑195/14, not published, EU:T:2015:681, paragraph 48).
94 Even though it cannot therefore be ruled out that part of the relevant public will understand the word ‘prima’ as ‘first’, it should be borne in mind that the Latin word ‘primus’ (‘prima’ in the feminine) is, above all, an ordinal numeral adjective, which does not immediately convey an idea of excellence (judgments of 24 September 2015, PRIMA KLIMA, T‑195/14, not published, EU:T:2015:681, paragraph 62, and of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 41).
95 Lastly, as regards the existence of commonly used words and expressions containing the word ‘prima’, such as ‘prima donna’, ‘prima ballerina’, ‘prima ballerina assoluta’, ‘prima facie’, ‘primo, secundo’, ‘primus inter pares’ and ‘primum non nocere’, the applicant’s argument cannot invalidate the Board of Appeal’s finding, given that in the examples cited, the word ‘prima’ is used in the context of expressions which have a meaning only as a whole and, moreover, has no connection to the nature of the goods at issue.
96 Furthermore, as regards the Latin meaning referred to in paragraph 94 above, it should be noted, as pointed out by the Board of Appeal, that there is little likelihood that the Spanish-speaking public would know the exact meaning of the Latin word ‘prima’ in those expressions. The applicant has not adduced any evidence capable of invalidating those findings.
97 Moreover, it should be borne in mind that the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (judgment of 13 June 2006, Representation of a cowhide, T‑153/03, EU:T:2006:157, paragraph 32). Therefore, in the present case, even if the word element ‘prima’ has a weak distinctive character within the composite signs at issue, that fact does not necessarily imply that it is negligible, since account must be taken, in particular, of its position in those signs and its size.
98 In the light of the foregoing, it must be concluded that the Board of Appeal did not make an error of assessment in finding, first, that the distinctive and dominant element of the earlier mark is the word element ‘prima’ and, secondly, that the distinctive and dominant element of the mark applied for is the word element ‘primagran’.
99 That conclusion cannot be called into question by the applicant’s other arguments.
100 First, as regards the assessment of the evidence submitted by the applicant, it is apparent from paragraph 42 of the contested decision that the Board of Appeal, contrary to what the applicant claims, carried out an analysis of the evidence submitted. Accordingly, that argument must be rejected as having no factual basis.
101 Secondly, the applicant is wrong to argue that the fact that there are numerous trade mark registrations containing the word element ‘prima’, which demonstrates the common use of that element, has an effect on its distinctive character. As EUIPO contended, the relevant factor for the purposes of disputing the distinctive character of an element of a mark is the actual presence of that element on the market and not its presence in registers or in databases (judgment of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). The applicant has not adduced any evidence to establish not only that the word element ‘prima’ is actually present on the market, but also, if that were the case, that its presence has an effect on its distinctive character.
(2) The similarity of the signs at issue
(i) Visual similarity
102 The applicant submits that the Board of Appeal paid too much attention to the fact that the initial letters of the mark applied for are identical to those of the word element of the earlier mark while, at the same time, the Board of Appeal ignored important differences between the marks at issue. Despite the tendency of consumers to focus on the beginning of the sign, the applicant maintains that they rarely have the chance to make a direct comparison. The applicant submits that the mark applied for is twice as long as the earlier mark, that it is written in a different typeface, and that it has a figurative element on the left side which is completely different from that of the earlier mark. It argues that the graphic elements and the group of additional letters ‘gran’ of the mark applied for clearly differentiate the marks at issue and cannot be considered as having a secondary role in the assessment of the similarity of the marks compared. Therefore, the applicant submits that the marks at issue may be considered to be visually similar to a low degree at the most.
103 EUIPO and the intervener dispute the applicant’s arguments.
104 In paragraph 46 of the contested decision, the Board of Appeal concluded that there was an average degree of visual similarity. It noted that the distinctive and dominant element of the earlier mark, namely the word element ‘prima’, is entirely reproduced at the beginning of the mark applied for, on which consumers tend to focus. The Board of Appeal added that the signs differ in the group of additional letters ‘gran’, added at the end of the mark applied for, and in the figurative elements of the signs which, however, are secondary in their overall impressions.
105 Contrary to what the applicant claims, that finding of the Board of Appeal must be upheld.
106 In the first place, it should be borne in mind that, according to the case-law, where the dominant element of the earlier mark is included in its entirety in the mark applied for, as in the present case, there is some visual similarity between the signs at issue (see, to that effect, judgment of 19 April 2016, 100% Capri Italia v EUIPO – IN.PRO.DI (100% Capri), T‑198/14, not published, EU:T:2016:222, paragraph 99).
107 In the second place, as regards the length of the signs at issue, the mark applied for contains the entire word element of the earlier mark. The word elements at issue differ only in the additional syllable ‘gran’ of the mark applied for. It follows that although the word elements at issue differ in their final parts, the relevant public will nonetheless perceive a visual similarity due to the word element ‘prima’ which is situated in their initial parts and represents essentially the entirety of the earlier mark.
108 In the third place, as regards the figurative elements, as is apparent from paragraphs 89 to 101 above, they are not part of the dominant and distinctive elements of the marks at issue. Therefore, the Board of Appeal cannot be criticised for concluding that the figurative elements play a secondary role since the relevant public tends to focus on the word element of a mark and the figurative elements are not part of the dominant and distinctive elements.
109 In the fourth place, as regards the word elements, it should be noted, as the applicant submits, that the typeface is indeed different. However, the typography used to represent the word elements does not display any particular originality. Consequently, the signs at issue have some similarity which cannot be ignored, notwithstanding the differences noted, namely, in particular, the element ‘gran’ and the figurative element.
110 Accordingly, the Board of Appeal did not make an error of assessment in finding that the signs at issue are, as a whole, visually similar to an average degree.
(ii) Phonetic similarity
111 The applicant submits that the syllable ‘gran’, which differentiates the marks at issue phonetically, is almost as long as the word element ‘prima’ of the earlier mark. That earlier mark is composed of two syllables, while the mark applied for consists of three syllables. The applicant claims that that difference cannot lead to an above-average degree of phonetic similarity. It maintains that there is, at the most, a low degree of phonetic similarity between the marks at issue.
112 EUIPO disputes the applicant’s arguments.
113 In paragraph 47 of the contested decision, the Board of Appeal noted that, for the purposes of the phonetic comparison, only the word elements, namely the elements ‘primagran’ and ‘prima’, have to be considered, given that the figurative elements will not be pronounced. It stated that both signs coincide in the two syllables of the word element of the earlier mark which are entirely included in the initial part of the word element of the mark applied for, the part on which consumers tend to focus. It added that the signs differ in the additional syllable ‘gran’ at the end of the mark applied for. The Board of Appeal concluded that the marks are phonetically similar, in essence, to a high degree.
114 That finding of the Board of Appeal must be upheld.
115 As has already been held, signs have a phonetic similarity when the word element of one mark is entirely included within another mark, which is the case here (see, to that effect, judgment of 2 February 2012, Almunia Textil v OHIM – FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited).
116 Furthermore, according to the case-law, the consumer normally attaches more importance to the first part of words (see judgment of 26 September 2014, Koscher + Würtz v OHIM – Kirchner & Wilhelm (KW SURGICAL INSTRUMENTS), T‑445/12, EU:T:2014:829, paragraph 60 and the case-law cited). Following that case-law, and contrary to what the applicant claims, the consumer will therefore attach more importance to the first two common syllables, namely ‘pri’ and ‘ma’. The additional syllable ‘gran’, which makes up the ending of the mark applied for, will be pronounced, but the effect of the first two syllables will be to create an above-average phonetic similarity.
117 The Board of Appeal’s assessment must therefore be upheld, as the arguments put forward by the applicant are not capable of invalidating that conclusion.
(iii) Conceptual similarity
118 In paragraph 48 of the contested decision, the Board of Appeal noted that, for the Spanish-speaking part of the public, the word ‘prima’ means ‘female cousin’ or ‘bonus payment’. It stated, in essence, that the word element of the mark applied for, as a whole, lacks any meaning. Therefore, it concluded that the marks are not similar from a conceptual point of view.
119 That assessment by the Board of Appeal, which is not disputed by the applicant, must be upheld.
120 In the light of all the foregoing, it must be concluded that the signs at issue are visually similar to an average degree and phonetically similar to a high degree, and that they are conceptually different.
121 Consequently, it must be held that the signs at issue are similar overall.
(d) Global assessment of the likelihood of confusion
122 The applicant submits, first, that the incorrect assessment of the visual and phonetic similarity of the signs at issue, and of the level of attention of the relevant public, has an influence on the outcome of the global assessment of the likelihood of confusion and, secondly, that the Board of Appeal should have taken into consideration the appropriate degree of similarity between the goods and services, the laudatory nature and the very weak distinctive character of the element ‘prima’, the numerous trade mark registrations in force in Spain containing the word element ‘prima’, the fact that the word ‘primagran’ does not exist in Spanish, and the graphic elements which clearly differentiate the marks at issue. It argues that those elements result in, at the most, a low degree of visual and aural similarity and a conceptual dissimilarity between the marks at issue, the very weak distinctive character of the earlier mark, and a high level of attention of the relevant public. According to the applicant, it is not possible to conclude that there is a likelihood of confusion.
123 EUIPO and the intervener dispute the applicant’s arguments.
124 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).
125 In paragraph 54 of the contested decision, as regards the goods at issue in Class 11 and the services ‘wholesaling and retailing of sinks; wholesaling and retailing of kitchen and bathroom fittings’ in Class 35 covered by the mark applied for, the Board of Appeal, taking into account, respectively, the identity and average similarity of those goods and services with the goods covered by the earlier mark, the average level of attention of the relevant public, the average degree of visual similarity and high degree of phonetic similarity of the signs at issue, and the normal distinctive character of the earlier mark, concluded that there was a likelihood of confusion on the part of the Spanish-speaking public, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in respect of those goods and services.
126 It follows from the foregoing that, first, the goods at issue are identical, and the contested services have an average degree of similarity with the goods in Class 11 covered by the earlier mark, and, secondly, the signs at issue are visually similar to an average degree and phonetically similar to a high degree.
127 It follows that, considered as a whole, the degree of similarity of the signs at issue and the degree of similarity of the goods and services covered by those signs are sufficiently high to establish that, in the present case, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
128 That conclusion is not invalidated by the applicant’s argument that the earlier mark has a weak distinctive character. In that regard, it is sufficient to note that a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61).
129 The Board of Appeal therefore did not make an error of assessment in finding that there was a likelihood of confusion on the part of the Spanish-speaking public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
130 In the light of all the foregoing considerations, the present plea in law must be rejected as manifestly unfounded and, consequently, the action must be dismissed in its entirety.
IV. Costs
131 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.
132 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1. The action is dismissed.
2. Primagran sp. z o.o. shall bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Compagnie des gaz de pétrole Primagaz.
Luxembourg, 22 September 2022.