JUDGMENT OF THE GENERAL COURT (Third Chamber)
29 March 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark ALMARA SOAP – Earlier EU word mark ALMENARA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Proof of genuine use of the earlier mark – Article 47(2) of Regulation 2017/1001)
In Case T‑436/22,
Veronika Machková, residing in Šestajovice (Czech Republic), represented by M. Balcar, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Aceites Almenara, SL, established in Puebla de Almenara (Spain),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
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 her action based on Article 263 TFEU, the applicant, Ms Veronika Machková, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 April 2022 (Case R 1613/2021‑1) (‘the contested decision’).
I. Background to the dispute
2 On 20 February 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 Classes 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:
– Class 3: ‘Soap; cosmetic soaps; body mask powder’;
– Class 5: ‘[Mineral bath salts]’.
4 On 31 March 2020, Aceites Almenara, 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 word mark ALMENARA, which had been filed on 18 November 2014 and registered on 17 March 2015 under the number 13470125 covering goods in Class 3 and corresponding to the following description: ‘Washing preparations and other substances for laundry use; soaps; perfumes, essential oils, cosmetics, hair lotions; dentifrices; oils for the body [cosmetics]; scented oils used to produce aromas when heated; oils for toilet purposes; distilled oils for beauty care; essential oils; blended essential oils; essential oils for the care of the skin; food flavouring, being essential oils; essential oils for use [in] foods; essential oils for use in air fresheners; essential oils for personal use; mineral oils [cosmetic]; natural oils for cosmetic purposes; natural oils for cleaning purposes; non-medicated oils; textile finishing oils; skincare oils [non-medicated]; oils for perfumes and scents; oils for cosmetic purposes; aromatics [essential oils]; flavourings for beverages [essential oils]; aromatherapy preparations; food flavourings prepared from essential oils; toiletries; tailors’ and cobblers’ wax; cleaning and fragrancing preparations; animal grooming preparations; abraders’.
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 30 July 2021, the Opposition Division upheld the opposition.
8 On 20 September 2021, 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 particular, it found, first, that the request for proof of genuine use of the earlier mark was inadmissible, since that mark had not been registered for at least five years at the time of the trade mark application. Second, it found, in essence, that, in view of the identity and high degree of similarity of the goods at issue, the average degree of visual and phonetic similarity between the marks at issue, the average degree of inherent distinctiveness of the earlier mark and the imperfect recollection of the relevant public, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the English-speaking part of that public.
II. Forms of order sought
10 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– order the registration of the mark applied for;
– order EUIPO to pay the costs incurred in the proceedings before the Opposition Division, the Board of Appeal and the Court.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, should a hearing take place.
III. Law
A. The Court’s jurisdiction to deal with the applicant’s second head of claim
12 As regards the applicant’s second head of claim that the Court should order the registration of the mark applied for, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). It follows that that head of claim must be rejected on the grounds of lack of jurisdiction.
B. Admissibility of the evidence adduced for the first time before the Court
13 EUIPO disputes the admissibility of Annexes 3 to 7 to the application, on the ground that they were adduced for the first time before the Court.
14 In this regard, it is settled case-law that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001. It follows from that provision that facts not relied on by the parties before the bodies of EUIPO may not be relied on at the stage of the action before the Court and that the latter may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 24 October 2018, Bacardi v EUIPO – Palírna U zeleného stromu (42 BELOW), T‑435/12, EU:T:2018:715, paragraph 52 and the case-law cited).
15 In the present case, it should be noted that Annexes 3 to 6 to the application, which relate to photographs of the applicant’s goods (Annex 3), to information on the town of Almenara (Spain) (Annex 4) and on the Castle of Puebla de Almenara (Annex 5), and to the definition of the term ‘almirah’ (Annex 6), were not adduced during the administrative procedure before the bodies of EUIPO. Annexes 3 to 6 to the application must therefore be declared inadmissible, in the light of the case-law referred to in paragraph 14 above, and they must be rejected on that ground.
16 By contrast, as regards Annex 7 to the application, which relates to the meaning of the term ‘almara’ in Czech, namely a ‘cupboard’, it should be noted that that definition had already been submitted by the applicant in her observations of 25 January 2021 before the Opposition Division and in her statement setting out the grounds of appeal before the Board of Appeal, with the result that it is not a new fact put forward for the first time before the Court, contrary to what EUIPO claims. Furthermore, the fact that, in Annex 7 to the application, the Czech definition of the term ‘almara’ is taken from the ‘Google Translation’ website, whereas, in her observations of 25 January 2021, the applicant had relied on the Wiktionary website, is irrelevant, since the definition of that term is identical according to the two sources of information referred to above. In those circumstances, Annex 7 to the application must be declared admissible.
C. Substance
17 In support of her action, the applicant raises, in essence, two pleas in law, alleging, first, that the Board of Appeal should have accepted as admissible the request for proof of genuine use of the earlier mark and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.
1. The first plea in law, alleging that the Board of Appeal erred in finding that the request for proof of genuine use of the earlier mark was inadmissible
18 The applicant complains, in essence, that the Board of Appeal displayed an ‘overstretched formalism’ in concluding that the request for proof of genuine use of the earlier mark was inadmissible, given that, on the date on which the application for the contested mark was filed, there remained only 15 days before the five-year period laid down in Article 47(2) of Regulation 2017/1001 expired.
19 EUIPO disputes the applicant’s arguments.
20 In that regard, it is sufficient to note that Article 47(2) of Regulation 2017/1001 lays down the opponent’s obligation to furnish, if the applicant so requests, proof of genuine use of the earlier mark only in so far as, at the date of filing or the date of priority of the EU trade mark application, the earlier mark has been registered for at least five years. Consequently, in establishing that rule, the EU legislature expressly set a criterion concerning the reference date for determining the admissibility of requests for proof of use, namely, the date of publication of the trade mark application at issue (see, to that effect, order of 30 May 2013, Wohlfahrt v OHIM, C‑357/12 P, not published, EU:C:2013:356, paragraphs 30 and 31, and judgment of 8 November 2017, Pempe v EUIPO – Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 21). Consequently, where the earlier mark relied on in support of an opposition has been registered for less than five years before the date of filing or the date of priority of the EU trade mark application, proof of genuine use cannot yet be required and the earlier mark must be deemed to have been used (see judgment of 16 May 2012, Wohlfahrt v OHIM – Ferrero (Kindertraum), T‑580/10, not published, EU:T:2012:240, paragraph 18 and the case-law cited).
21 In the present case, the five-year period at issue expired on 17 March 2020, given that the earlier mark had been registered on 17 March 2015, with the result that that period was still ongoing on the date on which the trade mark application was filed, namely 20 February 2020.
22 Consequently, the Board of Appeal acted correctly in finding, in paragraph 12 of the contested decision, that the request for proof of genuine use of the earlier mark was not admissible since the five-year period had not yet expired at the time when the trade mark application was filed. The applicant’s argument that the Board of Appeal displayed an ‘overstretched formalism’ cannot therefore succeed since the Board of Appeal merely applied correctly the provisions of Article 47(2) of Regulation 2017/1001.
23 It follows from the foregoing that the first plea in law must be rejected as unfounded.
2. The second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
24 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 in finding that there was a likelihood of confusion.
25 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, an 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.
26 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
27 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).
28 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, in order 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 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). Similarly, it is apparent from the case-law that a finding that there is a likelihood of confusion for a not insignificant part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see, to that effect, judgments of 10 November 2011, Esprit International v OHIM – Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraph 119, and of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited).
(a) The relevant public
29 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
30 In paragraphs 16 to 18 of the contested decision, the Board of Appeal found, first of all, that the goods at issue are everyday consumer goods which are purchased regularly for the daily hygiene and beauty routine and which are generally not expensive, with the result that the relevant public is composed of average consumers whose level of attention is average. Next, first, it found that, since the earlier mark was an EU trade mark, the assessment of the likelihood of confusion depended on the perception of the relevant public in the Member States of the European Union and, second, based its assessment on the English-speaking public of the European Union.
31 In that regard, the applicant submits, in essence, that the relevant public’s level of attention is high, given that ‘cosmetic soaps’, ‘body mask powder’ and ‘mineral bath salts’ are original and high-quality cosmetic products and are thus chosen with much greater care by the relevant public. In addition, she criticises the Board of Appeal for having assessed the existence of a likelihood of confusion in relation to the English-speaking part of the European Union, which is not justified, in particular where the Member States of that part are not specified.
32 EUIPO disputes the applicant’s arguments.
33 In the first place, it must be stated that the goods at issue are essentially cosmetic preparations and beauty or hygiene products, which are everyday consumer goods and are thus aimed at the general public, with an average level of attention (see, to that effect, judgment of 19 October 2022, Kaczorowska v EUIPO – Groupe Marcelle (MAESELLE), T‑718/21, not published, EU:T:2022:647, paragraph 27 and the case-law cited). Furthermore, contrary to the applicant’s contention, it is not apparent from the description of the goods at issue that they are luxury goods or goods that are so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them (see, to that effect and by analogy, judgment of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 19). In those circumstances, the Board of Appeal acted correctly in finding that the goods at issue were aimed at the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect.
34 In the second place, it should be borne in mind that, in order 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 or for a not insignificant part of the relevant public (see paragraph 28 above). It follows that the Board of Appeal was justified in limiting its assessment of the likelihood of confusion to the English-speaking public of the European Union, which is composed of the public in Ireland and Malta, but also in the Member States in which, at the very least, English is widely understood, which includes, inter alia, the public in Denmark, the Netherlands, Finland and Sweden, as is explained in paragraph 18 of the contested decision, contrary to what is claimed by the applicant.
(b) The comparison of the goods at issue
35 In assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
36 Furthermore, where the goods covered by the trade mark application are included in a more general category of goods covered by the earlier mark, those goods may be considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
(1) The comparison of the goods in Class 3 covered by the signs at issue
37 In paragraph 22 of the contested decision, the Board of Appeal found, first, that ‘soap’ covered by the mark applied for was reproduced identically in the list of goods in Class 3 covered by the earlier mark and, second, that ‘cosmetic soaps’ and ‘body mask powder’ were included in the more general category of ‘soaps’ and ‘cosmetics’ covered by the earlier mark. It thus concluded that the goods at issue in Class 3 were identical.
38 The applicant criticises the Board of Appeal for finding that the ‘cosmetic soaps’ and ‘body mask powder’ covered by the mark applied for were identical to the ‘cosmetics’ covered by the earlier mark, given that the term ‘cosmetics’ lacks clarity and precision and is capable of including any kind of product. Furthermore, she argues, the Board of Appeal failed to take into account, in the comparison of the goods at issue, the perfumes, essential oils and hair lotions covered by the earlier mark, which constitute a different category of cosmetics, namely oil-based cosmetics, which are not identical to the ‘body mask powder’ covered by the mark applied for.
39 EUIPO disputes the applicant’s arguments.
40 First, it must be pointed out that ‘soap’ in Class 3 covered by the mark applied for is identically included among the goods in Class 3 covered by the earlier mark. They are thus identical. This, moreover, is not called into question by the applicant.
41 Second, it should be noted that the ‘cosmetic soaps’ covered by the mark applied for are included, more specifically, in the more general category of ‘soap’ covered by the earlier mark. It follows that those goods are also identical, in accordance with the case-law referred to in paragraph 36 above.
42 Third, it should be noted that ‘cosmetic products’ are defined as ‘any substance or mixture intended to be placed in contact with the external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance, protecting them, keeping them in good condition or correcting body odours’ (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 34). It follows that, contrary to what the applicant claims, the term ‘cosmetics’ in no way lacks clarity and precision, given that it provides precise information on the nature and intended purpose of the goods which it covers.
43 Furthermore, in the light of that definition, it must be held, as the Board of Appeal found, that the term ‘cosmetics’ covers a broad category of goods, which includes ‘body mask powder’, since the latter constitutes a substance specifically intended for body care. In those circumstances, the Board of Appeal did not make an error of assessment in finding that the ‘body mask powder’ covered by the mark applied for was identical to the ‘cosmetics’ covered by the earlier mark.
44 Fourth and lastly, in so far as the applicant complains that the Board of Appeal did not compare the ‘soap’, ‘cosmetic soaps’ and ‘body mask powder’ covered by the mark applied for with other goods in Class 3 covered by the earlier mark, it must be borne in mind that the case-law does not require that the examination of relative grounds for refusal must necessarily be carried out in relation to each of the goods or services covered by the earlier mark. Where two marks are similar, it is sufficient for there to be a likelihood of confusion between the goods covered by the contested mark and a portion of the goods covered by the earlier mark in order for registration of the contested mark to be refused (see to that effect, judgment of 3 June 2015, Lithomex v OHIM – Glaubrecht Stingel (LITHOFIX), T‑273/14, not published, EU:T:2015:352, paragraph 24 and the case-law cited). Accordingly, in the present case, since the Board of Appeal, which took the view that there was a similarity between the signs at issue, found that each of the goods in Class 3 covered by the mark applied for was identical to some of the goods in the same class covered by the earlier mark, it was not necessary for it to make any further comparison with the other goods in Class 3 covered by the earlier mark.
(2) The comparison between the ‘mineral bath salts’ in Class 5 covered by the mark applied for and the goods in Class 3 covered by the earlier mark
45 In paragraphs 23 to 27 of the contested decision, the Board of Appeal found, in essence, that the ‘mineral bath salts’ covered by the mark applied for were similar to a high degree to the ‘toiletries’ and ‘cosmetics’ covered by the earlier mark, given that they had the same purpose and were, at the very least, complementary, in so far as they protected, healed, rejuvenated, beautified and enhanced the appearance or odour of the human body and skin. In addition, the goods at issue were usually sold in pharmacies, without explicitly claiming a primarily curative effect thereof, or in beauty shops or specific areas of department stores. Furthermore, it found, it was a well-known fact that certain pharmaceutical companies produce cosmetic preparations. Lastly, the goods at issue were aimed at the same public.
46 The applicant submits, in essence, that the ‘mineral bath salts’ in Class 5 are different from the goods in Class 3 covered by the earlier mark, in view of the fact that they are in a different class and have a different composition and method of use. Furthermore, the goods marketed by the applicant are colourful, original and highly distinctive, unlike those marketed by the intervener.
47 EUIPO disputes the applicant’s arguments.
48 In the present case, it is apparent from the case-law that goods that are intended for daily body care or that share hygiene and cosmetic properties may be considered to be similar (see judgment of 21 December 2021, Dr. Spiller v EUIPO – Rausch (Alpenrausch Dr. Spiller), T‑6/20, not published, EU:T:2021:920, paragraph 76 and the case-law cited). That is the situation in the present case. The ‘mineral bath salts’ covered by the mark applied for serve not only to clean the skin, like the ‘toiletries’ covered by the earlier mark, but also to improve, protect and heal the appearance or odour of the body and skin, like the ‘cosmetics’ covered by the earlier mark (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 111).
49 Furthermore, ‘mineral bath salts’ may also be used in conjunction with, or in addition to, ‘toiletries’ and ‘cosmetics’.
50 Lastly, those goods may be sold in the same outlets and it is not uncommon for the manufacturers of those goods to be the same (see judgment of 30 June 2021, Biovene Cosmetics v EUIPO – Eugène Perma France (BIOVÈNE), T‑232/20, not published, EU:T:2021:396, paragraph 53 and the case-law cited).
51 In those circumstances, it must be held that the ‘mineral bath salts’ in Class 5 covered by the mark applied for and the ‘toiletries’ and ‘cosmetics’ in Class 3 covered by the earlier mark are similar to a high degree.
52 That conclusion cannot be called into question, first, by the applicant’s argument that the goods at issue are in different classes, since, as is apparent from Article 33(7) of Regulation 2017/1001, goods and services are not considered to be similar on the ground that they appear in the same class, just as they are not considered to be dissimilar on the ground that they appear in different classes, as the Board of Appeal correctly pointed out in paragraph 20 of the contested decision.
53 Second, the applicant’s argument that ‘mineral bath salts’ and ‘cosmetics’ are different in nature on account of their respective composition cannot succeed. Although ‘mineral bath salts’ generally have an unstable and powdery composition, there is nothing to preclude ‘cosmetics’ from also including products with such a composition.
54 Third, although it is true that ‘mineral bath salts’ are used differently from ‘soaps’, given that salts are poured and diluted into the bath water, whereas soap is applied directly to the skin, it should nevertheless be borne in mind that the Board of Appeal merely compared the ‘mineral bath salts’ in Class 5 covered by the mark applied for with some of the goods in Class 3 covered by the earlier mark, namely ‘toiletries’ and ‘cosmetics’, and that it correctly concluded that those goods were highly similar. Consequently, in the light of the case-law referred to in paragraph 44 above, the applicant’s argument is ineffective.
55 Fourth and lastly, in so far as the applicant relies on the difference in appearance of the goods at issue or on their respective distinctive characters, it is sufficient to note that such criteria are in no way relevant for the purposes of the comparison of the goods at issue.
(c) The comparison of the signs at issue
56 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, 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).
57 According to the case-law, two marks are similar where, 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 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).
(1) The distinctive and dominant elements of the mark applied for
58 According to the case-law, 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 (order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).
59 In order to assess 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 (see judgment of 8 February 2007, Quelle v OHIM – Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58 and the case-law cited).
60 It is in the light of those considerations that the presence of any distinctive and dominant elements in the mark applied for should be assessed.
61 In paragraphs 31 to 35 of the contested decision, the Board of Appeal found, in essence, that the word element ‘almara’ was the most distinctive element of the mark applied for. First, it found that the word element ‘almara’ of the mark applied for had no meaning in relation to the goods at issue and thus had distinctive character. Second, it found that the figurative element of the mark applied for, namely a heart symbol, had very weak distinctive character, in so far as it was a symbol of love frequently used to express a positive emotion and which made it possible to convey to the consumer the idea that the provider of the goods has ‘a heart’ or devotes itself ‘with full heart’ to the goods at issue, or that they are produced or offered ‘with love’. Third, the Board of Appeal found that the word element ‘soap’ in the mark applied for was easily understood by the English-speaking public, in so far as it described soap. Thus, in so far as all the goods covered by the mark applied for were in one way or another soaps or made of soap, the word element ‘SOAP’ would be perceived as designating the nature of those goods, with the result that it is less distinctive in the overall impression created by the mark applied for.
62 In that regard, first, the applicant submits that, even if the Board of Appeal’s conclusion relating to the distinctive character of the elements of the mark applied for were correct, that would not justify disregarding its non-distinctive elements in the context of the comparison of the signs at issue. Second, although it is true that the heart symbol of the mark applied for is frequently used, it is more likely to be perceived as part of the mark affixed to all her soaps and not as referring directly to the concept of ‘love’. Furthermore, in view of its position in the middle of the mark applied for and the fact that it is the only figurative element of that mark, the heart symbol is dominant. Third, contrary to what the Board of Appeal found, the word element ‘soap’ of the mark applied for has distinctive character, given that it is understood by a large part of the public in the European Union and that not all of the goods in the category of ‘cosmetics’ are soaps.
63 EUIPO disputes the applicant’s arguments.
64 In the present case, the mark applied for consists, first, of the word elements ‘almara’ and ‘soap’ represented in black bold upper-case letters in a stylised font and, second, of a symbol in the shape of a heart, which is placed between the two word elements at issue and is of the same size and black colour as those word elements.
65 First, as regards the word element ‘almara’, it must be held, as the Board of Appeal found in paragraph 32 of the contested decision, that it has no meaning for the relevant English-speaking public, with the result that it has distinctive character. That is not, moreover, called into question by the applicant.
66 Second, it must be pointed out, as the Board of Appeal correctly did in paragraph 34 of the contested decision, that the word element ‘soap’ is an English word meaning ‘soap’, that is to say, ‘a substance that [is used] with water for washing yourself or sometimes for washing clothes’, which will be easily understood by the relevant English-speaking public. It must thus be noted that the word element ‘soap’ directly describes the ‘soap’ and ‘cosmetic soaps’ covered by the mark applied for. Similarly, since, as the applicant has pointed out, ‘body mask powder’ is used in order to carry out deep cleansing of the skin and, as noted in paragraph 48 above, ‘mineral bath salts’ are used, inter alia, to clean the body, it cannot be ruled out that such goods are made of soap, with the result that the word element ‘soap’ is also capable of referring to a quality of those goods. It follows that the word element ‘soap’ is, at most, only weakly distinctive in relation to the goods covered by the mark applied for.
67 Furthermore, it is necessary to reject the applicant’s argument that the word element ‘soap’ is not descriptive of all the goods in the category of ‘cosmetics’, since, in accordance with the case-law referred to in paragraph 58 above, the distinctive character of the elements making up the mark applied for must be assessed in relation to the goods which it covers. However, the mark applied for does not cover ‘cosmetics’.
68 Third, as regards the heart symbol, it is apparent from the case-law that an element representing a heart is commonly used in advertising language to express a particular attachment and that it is devoid of distinctive character (see, to that effect, judgment of 7 November 2019, Local-e-motion v EUIPO – Volkswagen (WE), T‑568/18, not published, EU:T:2019:783, paragraph 55). Consequently, that figurative element will be understood by consumers as merely a decoration or, at most, as an allusion to love or affectionate appreciation showing that that element is laudatory in relation to the goods at issue (see, to that effect, judgment of 16 November 2022, Epsilon Data Management v EUIPO – Epsilon Technologies (EPSILON TECHNOLOGIES), T‑512/21, not published, EU:T:2022:710, paragraph 31). It follows that that element cannot be held to be distinctive. That is all the more so since, according to the case-law, where signs consist of both word and figurative elements, the word element generally has a greater impact on the consumer than the figurative element, because the average consumer will more easily refer to the goods in question by quoting the name of the trade mark concerned rather than by describing the figurative element of that mark (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
69 Furthermore, contrary to what the applicant claims, the figurative element of the mark applied for cannot be regarded as dominant either. It is of the same size and of the same black colour as the word elements of the mark applied for and occupies less space than those word elements, with the result that it is not capable of attracting the public’s attention. The mere fact that it is placed in the middle of the mark applied for and that it is the only figurative element of that mark cannot call that finding into question.
70 Lastly, in so far as the applicant submits that the heart symbol will be more readily perceived as being part of the mark applied for than a non-distinctive symbol, given that it would be directly affixed to all the soaps that she markets, it should be recalled that the comparison must be between the signs as registered or as they appear in the application for registration (see, to that effect, judgment of 21 September 2017, The Logistical Approach v EUIPO – Idea Groupe (Idealogistic), T‑620/16, not published, EU:T:2017:635, paragraph 88 and the case-law cited), with the result that the applicant’s argument cannot succeed.
71 It follows from the foregoing considerations that the most distinctive element of the mark applied for is its word element ‘almara’, as the Board of Appeal in essence found.
72 Furthermore, in so far as the applicant criticises the Board of Appeal for having disregarded, in the context of the comparison of the signs at issue, the elements of the mark applied for which have a weak distinctive character, namely the word element ‘soap’ and the figurative element of that mark, it must be stated that that is not at all apparent from the contested decision. On the contrary, it is apparent in particular from paragraphs 36 and 37 of that decision that the Board of Appeal took account of the fact that the signs at issue differed visually in the ‘remaining less distinctive [word] and figurative elements of the … mark [applied for]’ and, phonetically, in ‘the pronunciation of the less distinctive element ‘SOAP’, while the heart symbol [was] not pronounced’. Accordingly, that argument is unfounded and must be rejected.
(2) The visual comparison
73 In paragraph 36 of the contested decision, the Board of Appeal found that the signs at issue overlap, in their respective distinctive elements, with regard to the letter sequences ‘alm’ and ‘ara’, which were placed in the same position and order, whereas they differed in the sequence of letters ‘en’ in the word element ‘almenara’ of the earlier mark, in the stylisation of the word elements of the mark applied for and in the presence of the word element ‘soap’ and the figurative element of the mark applied for. However, it found that those differences were not significant or sufficient to eclipse any impression of similarity, given the weak distinctive character of the word element ‘soap’. It thus concluded that the signs at issue were visually similar to an average degree.
74 The applicant submits, in essence, that the signs at issue are visually different, by reason of the specific font and the dominant figurative element of the mark applied for, and by reason of the clear difference in length between those signs.
75 EUIPO disputes the applicant’s arguments.
76 In the present case, it must first be noted that the word element ‘almara’ of the mark applied for and the word element ‘almenara’ of which the earlier mark consists have in common six out of eight letters and share the letter sequences ‘alm’ and ‘ara’, which are placed in the same position and order. They differ only in the two additional letters ‘e’ and ‘n’ placed in the middle of the word element ‘almenara’, which are, however, likely to go unnoticed, given their position and the fact that the word elements at issue have not only an identical beginning, namely ‘alm’, but also an identical ending, namely ‘ara’.
77 Next, it must be pointed out that the signs at issue are distinguished by the additional word and figurative elements of the mark applied for, by their difference in length and by the stylised font of the mark applied for.
78 However, it must be borne in mind that, according to the case-law, the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see, to that effect, judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM – Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 36 and the case-law cited). It is true that, as is indicated by the adverb ‘normally’, that consideration cannot apply in all cases (see judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM – Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58 and the case-law cited). However, since, in the present case, the word element ‘almara’ is the most distinctive element of the mark applied for, it must be held that it will be more likely to attract the attention of the relevant public than the word element ‘soap’ and the figurative element of the mark applied for, which are either devoid of distinctive character or have only a weak distinctive character (see paragraphs 65 to 71 above). Therefore, the word element ‘almara’ must be regarded as the dominant element in the visual impression created by the mark applied for.
79 Furthermore, contrary to what the applicant claims, the stylised font of the mark applied for is not particularly original or striking, with the result that the consumer will not pay particular attention to it.
80 It must therefore be held that the differences noted do not outweigh the visual characteristics common to the earlier mark and to the most distinctive element of the mark applied for, as established in paragraph 76 above, which will be most likely to be remembered by consumers. It follows that the Board of Appeal did not commit an error of assessment in finding that there is an average degree of visual similarity between the signs at issue.
(3) The phonetic comparison
81 In paragraph 37 of the contested decision, the Board of Appeal found that, first, the pronunciation of the signs at issue coincided in the sound of the letters ‘alm’ and ‘ara’, which appear at the beginning and end of their respective distinctive elements, which would retain consumers’ attention more. Second, it found that the signs at issue differed in the sound of the letters ‘en’ of the earlier mark and in the pronunciation of the less distinctive element ‘soap’ of the mark applied for, whereas the heart symbol of the mark applied for would not be pronounced. The Board of Appeal thus found that the signs at issue were phonetically similar to an average degree, in view of the weakened distinctiveness of the word element ‘soap’ which appears only in the mark applied for.
82 The applicant criticises the Board of Appeal, first, for failing to take into account all the different pronunciations of the signs at issue which exist in all the official languages of the European Union. Second, according to the applicant, the sequence of the letters ‘alm’ and ‘ara’ should not be taken into consideration for the purposes of the phonetic comparison, since there is a clear break between the first common syllable ‘al’ and the second syllables ‘me’ and ‘ma’ in the earlier mark and the mark applied for respectively. Third, the applicant submits that the respective pronunciations of the signs at issue, taken as a whole, have a different rhythm and intonation. The earlier mark contains four syllables (‘al’, ‘me’, ‘na’ and ‘ra’), with stress on the third syllable, whereas the mark applied for also contains four syllables (‘al’, ‘ma’, ‘ra’ and ‘soap’), but with stress on the second and fourth syllables, since the figurative element will not be pronounced.
83 EUIPO disputes the applicant’s arguments.
84 As a preliminary point, it must be pointed out that, in the strict sense, the phonetic reproduction of a composite trade mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the analysis of the sign on a visual level (see, to that effect, judgment of 11 December 2013, Eckes-Granini v OHIM – Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraph 49 and the case-law cited). Accordingly, for the purposes of the phonetic comparison, it is not necessary to take into account the figurative element of the mark applied for, which will not be pronounced by the relevant public (see, to that effect, judgments of 11 September 2014, Aroa Bodegas v OHIM – Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 45, and of 25 November 2020, Impera v EUIPO – Euro Games Technology (Flaming Forties), T‑874/19, not published, EU:T:2020:563, paragraph 68). Furthermore, this has not been disputed by the applicant.
85 It is also important to bear in mind that the Board of Appeal was justified in limiting its assessment of the likelihood of confusion to the English-speaking public of the European Union (see paragraph 34 above), with the result that the applicant’s argument that the Board of Appeal should have taken account of all the pronunciations of the signs at issue in all the official languages of the European Union cannot succeed.
86 Next, it should be noted that, although the earlier mark will be pronounced as four syllables (‘al’, ‘me’, ‘na’ and ‘ra’), whereas the most distinctive word element of the mark applied for will be pronounced in only three syllables (‘al’, ‘ma’ and ‘ra’), the fact nonetheless remains that the first and last syllables will be pronounced identically, whereas the sound produced by their respective second syllables, namely ‘me’ and ‘ma’, is very similar. Furthermore, contrary to what the applicant claims, it is also necessary to take into account the fact that the word elements at issue coincide in the sound produced by their first three letters ‘a’, ‘l’ and ‘m’ and by their last three letters ‘a’, ‘r’ and ‘a’. Furthermore, both the rhythm of pronunciation of the signs and the intonation are similar, notwithstanding the presence of a different syllable in the middle of the earlier mark.
87 Lastly, as regards the impact of the additional word element ‘soap’ in the phonetic impression created by the mark applied for, it must be borne in mind that the consumer generally pays greater attention to the beginning of a sign than to the end and generally tends to contract long marks consisting of two words into a single word (see, to that effect, judgment of 29 June 2022, Jose A. Alfonso Arpon v EUIPO – Puma (PLUMAflex by Roal), T‑357/21, not published, EU:T:2022:405, paragraph 52 and the case-law cited). In the present case, in so far as the word element ‘soap’ of the mark applied for is descriptive of a type of goods covered by that mark (see paragraph 66 above), it may be presumed that that element will be less likely to attract the attention of the relevant public than the word element ‘almara’, which will be pronounced before it and which is the most distinctive element of the mark applied for, or even that it will not be pronounced at all by a part of that public. Consequently, the word element ‘soap’ of the mark applied for, which is of secondary phonetic importance in that mark, is not such as to outweigh the phonetic similarities noted in paragraph 86 above.
88 In those circumstances, it must be held that the Board of Appeal acted correctly in finding that there was an average degree of phonetic similarity between the signs at issue.
(4) The conceptual comparison
89 In paragraph 38 of the contested decision, the Board of Appeal found that the signs at issue were not conceptually similar, given that the earlier mark was devoid of meaning.
90 The applicant complains that the Board of Appeal failed to take into account the Czech meaning of the word element ‘almara’ of the mark applied for and the Spanish meaning of the word element ‘almenara’ of the earlier mark. Nevertheless, if English alone had been taken into consideration, the earlier mark would have had no meaning, like the word element ‘almara’ of the mark applied for. Furthermore, the Board of Appeal failed to take into account the stylised representation of the heart and the word element ‘soap’ of the mark applied for, which should have led it to the conclusion that the signs at issue were conceptually different.
91 EUIPO disputes the applicant’s arguments.
92 As a preliminary point, it is necessary to reject at the outset, as unfounded, the applicant’s argument that the Board of Appeal failed to take into account the Czech and Spanish meanings of the word elements of the signs at issue, since the Board of Appeal was justified, for the reasons set out in paragraph 34 above, to confine itself, in the present case, to analysing the existence of a likelihood of confusion for the English-speaking part of the general public of the European Union.
93 Next, it must be held, as the Board of Appeal found in paragraph 30 of the contested decision, that the earlier mark ALMENARA is devoid of meaning for the English-speaking public of the European Union. As regards the mark applied for, it has already been held, in paragraphs 65 and 66 above, that the word element ‘almara’ is devoid of meaning for the English-speaking public in the European Union, while the word element ‘soap’ would be understood as referring to soap and the heart symbol as alluding to the concept of love. Accordingly, even if the relevant English-speaking public does not understand the term ‘almara’, the mark applied for is likely to be understood as referring, at the very least, to the concept that, inter alia, the applicant’s soaps are produced or offered with love, as the Board of Appeal noted, in essence, in paragraph 33 of the contested decision.
94 In those circumstances, the Board of Appeal did not commit any error of assessment in finding that the signs at issue were not conceptually similar.
(d) The global assessment of the likelihood of confusion
95 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 (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 74; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).
96 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
97 In paragraphs 41 to 46 of the contested decision, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant English-speaking public with an average level of attention, regard being had to the identity and high degree of similarity of the goods at issue, the average degree of inherent distinctiveness of the earlier mark, the average degree of visual and phonetic similarity of the signs at issue and the imperfect recollection of the relevant public.
98 The applicant submits that there can be no likelihood of confusion, given that, first, some of the goods at issue are different and, second, the similarities between the signs at issue are not sufficient to cause a part of the relevant public to believe that the other goods at issue, which are identical or similar to a low degree, come from the same undertaking or from economically linked undertakings. Furthermore, the applicant refers to the judgment of 4 February 2013, Hartmann v OHIM – Protecsom (DIGNITUDE) (T‑504/11, not published, EU:T:2013:57), in which a likelihood of confusion was ruled out, even though the signs at issue in the case giving rise to that judgment, namely Dignity and DIGNITUDE, are more similar than the terms ‘almara’ and ‘almenara’.
99 EUIPO disputes the applicant’s arguments.
100 In the present case, it follows from the considerations already set out that the relevant English-speaking public displays an average level of attention with regard to the goods at issue. Next, it has been held that the goods at issue were identical or very similar. Furthermore, it has been pointed out that the visual and phonetic similarity of the signs at issue was average, while the signs at issue were not conceptually similar. Lastly, as the Board of Appeal correctly found, the earlier mark has an average degree of inherent distinctiveness, since it is devoid of meaning in relation to the goods at issue for the relevant English-speaking public, a finding that, moreover, is not disputed by the applicant.
101 In those circumstances, the Board of Appeal was right to find, in the present case, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
102 That conclusion cannot be called into question by the judgment of 4 February 2013, DIGNITUDE (T‑504/11, not published, EU:T:2013:57), relied on by the applicant, since it is apparent from that judgment that the Court concluded that there was no likelihood of confusion solely on account of the lack of similarity between the goods at issue and thus in no way ruled on the similarity of the signs at issue in that case.
103 In the light of all of the foregoing, the second plea in law must be rejected and, in consequence, the action must be dismissed in its entirety.
Costs
104 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.
105 Since EUIPO has applied for costs to be awarded against the applicant only in the event that a hearing were to be held, each of the parties must be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Ms Veronika Machková and the European Union Intellectual Property Office (EUIPO) to each bear their own costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 29 March 2023.