Language of document : ECLI:EU:T:2021:719

JUDGMENT OF THE GENERAL COURT (Tenth Chamber)

20 October 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark Vital like nature – Earlier EU figurative mark VITAL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑351/20,

St. Hippolyt Holding GmbH, established in Dielheim (Germany), represented by M. Gail, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Raisioaqua Oy, established in Raisio (Finland), represented by K. Rantala, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 March 2020 (Case R 1279/2019-2) relating to opposition proceedings between Raisioaqua and St. Hippolyt Holding,

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov (Rapporteur), President, K. Kowalik-Bańczyk and G. Hesse, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 June 2020,

having regard to the intervener’s opposition to the language of the application lodged at the Court Registry on 28 June 2020,

having regard to the decision of the Court Registry of 24 September 2020 concerning the use of the language of the contested decision as the language of the proceedings pursuant to Article 45(4)(c) of the Rules of Procedure of the General Court,

having regard to the response of EUIPO lodged at the Court Registry on 19 January 2021,

having regard to the response of the intervener lodged at the Court Registry on 9 January 2021,

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        On 1 September 2017, the applicant, St. Hippolyt Holding GmbH, under its former corporate name, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by 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)).

2        Registration as a mark was sought for the following figurative sign:

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3        The goods in respect of which registration was applied for are, inter alia, in Class 31 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 to the following description: ‘Foodstuffs and fodder for animals; agricultural and aquacultural crops, horticulture and forestry products; bedding and litter for animals; sowing seeds; unprocessed cereals; fresh fruits and vegetables; garden herbs, fresh; seeds for planting; crop seeds; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 187/2017 of 2 October 2017.

5        On 30 October 2017, the intervener, Raisioaqua Oy, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of the goods in Class 31 referred to in paragraph 3 above.

6        The opposition was based on the earlier EU figurative mark reproduced below, registered under number 16171449, in respect of goods in Class 31 corresponding to ‘Foodstuffs for animals; fish meal containing fatty acids; meal for animals; grains for animal consumption; fish meal for animal consumption; fodder; pet food’:

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7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8        On 3 April 2019, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 as regards ‘foodstuffs and fodder for animals; agricultural crops; bedding and litter for animals; sewing seeds; unprocessed cereals; seeds; seeds for planting; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains’ and rejected the opposition as regards ‘aquaculture crops, horticulture and forestry products; fresh fruits and vegetables; garden herbs, fresh’.

9        On 11 June 2019, the applicant filed a notice of appeal with EUIPO under Articles 66 to 71 of Regulation 2017/1001 against the decision of the Opposition Division.

10      By decision of 9 March 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In essence, it found that the goods covered by the signs at issue, which were the subject of the action, were identical or similar and that those signs were globally similar to an average degree. Thus, in view of the relevant factors and their interdependence, there was, for a significant part of the relevant public, a likelihood of confusion as to the commercial origin of the goods in question.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should:

–        dismiss the action;

–        uphold the contested decision;

–        order the applicant to pay the costs incurred by the intervener in the proceedings before the Board of Appeal and before the Court.

 Law

14      In view of the date on which the application for registration at issue was filed, that is to say 1 September 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their written pleadings, to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, which is identical in content.

15      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It alleges that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of that article.

16      EUIPO and the intervener dispute the applicant’s arguments.

17      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because it is identical with, or similar to, an earlier trade mark, or because the goods or services covered by the trade marks are identical or similar, 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.

18      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs 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).

20      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 signs 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 No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

21      It is in the light of those considerations that the Court must assess whether the Board of Appeal was right to find that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 The relevant public

22      The Board of Appeal stated, in paragraph 27 of the contested decision, that the relevant public consisted partly of the public at large, who cultivate raw unprocessed land products, for use in gardening and for feeding domestic animals, and partly professionals, in particular those involved in the agricultural industry. The level of attention of the relevant public varies from average to high.

23      The applicant states, in that regard, that it is very well known to the average consumer in the equestrian sector, that the goods which it markets under the mark applied for are foodstuffs for horses and that, therefore, its goods are always purchased in a ‘targeted’ manner. Furthermore, the level of attention of the relevant public is average.

24      Even if, by that argument, the applicant seeks to call into question the Board of Appeal’s definition of the relevant public, suffice it to recall that any reputation or renown of the mark applied for has no bearing on the definition of the relevant public and, more generally, on the assessment of whether there is a likelihood of confusion, in contrast with that of the earlier mark (see, to that effect, judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 84). Furthermore, in so far as the applicant seeks to rely on a commercial strategy consisting of using the mark applied for in respect of a target category of consumers in the equestrian sector, it is important to note that the relevant public must be defined in the present case by taking into account the category of goods designated in the application for registration of the mark at issue and not according to the consumers targeted by the applicant in the context of such a commercial strategy (see, to that effect, judgment of 29 March 2017, J & Joy v EUIPO – Joy-Sportswear (J&JOY), T‑389/15, not published, EU:T:2017:231, paragraphs 25 to 27). Accordingly, those arguments of the applicant must be rejected.

25      As regards the level of attention of the relevant public, the Board of Appeal found that it varied from average to high, whereas the applicant claims that it is average. In that respect, suffice it to note that, according to settled case-law, where the relevant public is composed of two categories of consumers each with a different level of attention, the public with the lower level of attention must be taken into consideration (judgments of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29, and 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). In those circumstances, it is necessary, in the present case, to assess whether there is a likelihood of confusion by reference to the relevant public with an average level of attention when purchasing the goods at issue.

26      It should also be noted that, in the present case, the Board of Appeal, like the Opposition Division, focused its examination on the perception of English-speaking consumers, given that the word elements of the signs at issue belong to the English language, while referring, without stating specific reasons, in order to supplement some of its findings, to the perception of the non-English-speaking public, in particular the Polish-, Greek- and Bulgarian-speaking public.

27      The Court considers that, in order to resolve the present dispute, it is sufficient to rely on the perception of the English-speaking public.

 The comparison of the goods

28      In paragraph 28 of the contested decision, the Board of Appeal stated that it endorsed the Opposition Division’s finding that the goods at issue, all in Class 31, were identical or similar, referring to the grounds of that division’s decision and stating that the applicant did not dispute that finding. In that regard, the Opposition Division stated, first, that ‘foodstuffs and fodder for animals’ coincided in the lists of goods covered by the signs at issue. Secondly, it found that ‘agricultural crops’, ‘bedding and litter for animals’ and ‘sewing seeds; unprocessed cereals; seeds; seeds for planting; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains’, covered by the mark applied for, were similar to ‘meal for animals’, ‘fodder’ and ‘foodstuffs for animals’, respectively, covered by the earlier mark.

29      The applicant merely claims that its distribution channels and those of the intervener are not the same, in so far as it distributes its goods directly to horse owners via its website or through shops specialising in equestrian articles. Thus, since horse feed is not normally sold in specialist pet shops, consumers would never be faced with the applicant’s goods and those of the intervener at the same time.

30      It should be observed in that regard that the particular circumstances in which the applicant’s goods were marketed, which may, moreover, vary over time depending on the applicant’s wishes, are not sufficient in themselves to conclude that there is a difference between the goods (see, to that effect, judgment of 29 March 2017, J&JOY, T‑389/15, not published, EU:T:2017:231, paragraph 34). Consequently, that argument advanced by the applicant is unfounded.

31      In addition, the applicant states, in various parts of the application, at times that the goods at issue are ‘sufficiently different’, that the goods are of ‘low’ similarity, or that they are ‘identical’. Those statements, as EUIPO points out, are contradictory and must be rejected as inadmissible, since they do not meet the requirements for clarity and precision laid down in the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which applies to the procedure before the General Court by virtue of the first paragraph of Article 53 thereof, and of Article 177(1)(d) of the Rules of Procedure of the General Court (see, to that effect, judgment of 17 January 2019, ETI Gıda Sanayi ve Ticaret v EUIPO – Grupo Bimbo (ETI Bumbo), T‑368/18, not published, EU:T:2019:15, paragraph 19).

32      Accordingly, the applicant’s arguments relating to the comparison of the goods at issue must be rejected.

 The comparison of the signs at issue

33      The applicant disputes the Board of Appeal’s assessment of the visual, phonetic and conceptual aspects of the comparison of the signs at issue and, consequently, its assessment of the overall impression created by those signs.

34      EUIPO and the intervener dispute the applicant’s arguments.

35      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgment of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43 and the case-law cited).

36      In addition, the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

37      In the present case, the signs at issue are the following:

Mark applied for

Earlier mark



 The dominant and distinctive elements of the signs at issue

38      The mark applied for is composed of three word elements and does not have any specific figurative element. The word element ‘vital’ is in the upper part of the sign and appears in a large size, written in black letters, in italics, with a standard font, its first letter being upper case. The elements ‘like’ and ‘nature’ appear below, in a smaller size, in lower-case letters, presented in black characters, with a standard font.

39      According to the Board of Appeal, while the word elements ‘like’ and ‘nature’ could not be regarded as negligible, the element ‘vital’ was, on account of its larger size and its position, the dominant element of the mark applied for.

40      As regards the earlier mark, it is composed of figurative elements and a word element, namely the word ‘vital’. In the upper part there is a circle which is edged in green on the outside and white on the inside. A white line comes from the white edge and crosses the circle, creating the appearance of the letter ‘v’ and dividing the background of the circle into yellow and green. The word element ‘vital’ is situated below that circle, is presented in capital letters, with a standard font, and is green in colour. Each of those two components of the earlier mark occupies a clearly visible and important position within the arrangement of the mark applied for.

41      In that regard, the Board of Appeal noted that, where signs consist of both verbal and figurative elements, in principle the word element of the sign generally has a greater impact on the consumer than the figurative element. That is explained by the fact that the public does not tend to analyse the signs and that it will more easily refer to the signs at issue by citing their word element than by describing their figurative elements (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). The Board of Appeal stated that there was no justification for derogating from that principle in the present case and that, consequently, the figurative element of the earlier mark was of less importance in that mark.

42      The Board of Appeal also stated that the common element of the signs at issue, namely the word ‘vital’, was of a weak or non-distinctive character for the goods at issue, because, in essence, it would be understood as indicating that the goods are necessary or very important for animals in particular. That meaning is reinforced, moreover, by the meaning of the expression ‘like nature’ of the mark applied for, because it alludes to the fact that the goods have natural properties.

43      However, according to the Board of Appeal, the fact that an element has a weak distinctive character does not mean that it cannot serve to indicate commercial origin. Furthermore, again according to the Board of Appeal, in the present case the elements which differ in the signs at issue do not have a high degree of distinctiveness either.

44      Those findings of the Board of Appeal are correct.

45      The weak distinctive character of an element of a trade mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 12 June 2018, Cotécnica v EUIPO – Mignini & Petrini (cotecnica MAXIMA), T‑136/17, EU:T:2018:339, paragraph 52 and the case-law cited).

46      Such is the situation in the present case. As regards the mark applied for, first, because of its size or its position, the word ‘vital’ dominates the overall impression of that mark. Secondly, the other two word elements, namely ‘like’ and ‘nature’, are not particularly distinctive either and are therefore not likely to attract the attention of the relevant public more. Therefore, the Board of Appeal was right to conclude that the word element ‘vital’ was the dominant element of the mark applied for.

47      As regards the earlier mark, it is sufficient to point out that the case-law referred to in paragraph 41 above, according to which, where signs consist of both verbal and figurative elements, in principle the word element of the sign generally has a greater impact on the consumer than the figurative element, is applicable in the present case, given that the figurative element of the earlier mark in the form of a circle is neither particularly memorable nor structured in such a way that it dominates the overall impression created by that mark, which, moreover, the applicant does not claim. That element has a common shape, namely that of a circle, uses a basic colour combination and is devoid of any aspects likely to divert the relevant public’s attention away from the word element towards that figurative element. Furthermore, the line crossing the circle of that figurative element may be perceived as the stylised shape of the letter ‘v’, which is the first letter of the word element ‘vital’, with the result that it can be seen as echoing that word element, thus directing more attention to it. Therefore, the relevant public will perceive the figurative element in the shape of a circle as an adjunct to the word element ‘vital’ and, therefore, will tend to remember that element.

48      Consequently, the Board of Appeal was entitled to find that the dominant element of the mark applied for was the word element ‘vital’ and that the figurative element in the shape of a circle of the earlier mark was of less importance in the overall impression of that mark.

 Visual, phonetic and conceptual comparison of the signs

49      As regards, in the first place, visual similarity, the Board of Appeal found, in paragraphs 41 and 42 of the contested decision, that the signs at issue coincided because of the presence of the element ‘vital’, which is the dominant element of the sign applied for, and differed on account of the presence of less important elements, namely the additional elements ‘like’ and ‘nature’ present in the mark applied for and the stylisation and the figurative element of the earlier mark. It concluded, on that basis, that the signs at issue were visually similar to an average degree.

50      The applicant claims that the signs at issue are not visually similar. It submits that the earlier mark is a figurative sign composed of one word whereas the mark applied for consists of three stylised words. Furthermore, the signs at issue are arranged differently.

51      In the present case, as the Board of Appeal correctly found, the signs at issue have in common the word element ‘vital’. That element is the dominant element of the mark applied for and the only word element of the earlier mark; accordingly, it holds the relevant public’s attention more, as has been pointed out in paragraph 47 above.

52      The fact that the signs at issue also contain additional elements was duly taken into account by the Board of Appeal when it concluded that there was an average degree of visual similarity. That conclusion is correct, given that the elements differentiating the signs at issue are of less importance in the overall impression for the reasons set out in paragraphs 46 and 47 above.

53      In the second place, as regards the phonetic aspect of the signs at issue, the Board of Appeal stated, in paragraph 43 of the contested decision, that they were similar to an average degree on the ground that they coincided in the pronunciation of the common element ‘vital’, that the figurative or stylised elements were not pronounced, that the other elements which could be pronounced in the mark applied for, namely ‘like nature’, had only limited distinctiveness and that consumers paid more attention to the beginning of the signs. Thus, the only element that is pronounced in the earlier mark is included entirely in the mark applied for.

54      In that regard, the applicant merely states that the General Court held in its judgment of 22 September 2011, ara v OHIM Allrounder (A with two triangular motifs) (T‑174/10, not published, EU:T:2011:519), that the word sign A could not be considered to be phonetically comparable to a figurative sign representing the capital letter ‘A’ with ‘two additional horns’. However, the case which gave rise to that judgment is in no way comparable to the present one. In that judgment, the Court found that the contested mark was characterised by a very particular graphic design and that, consequently, the relevant public would tend to describe it and not to pronounce it, so that a phonetic comparison was excluded (see, to that effect, judgment of 22 September 2011, A with two triangular motifs, T‑174/10, not published, EU:T:2011:519, paragraph 32). By contrast, in the present case, both the mark applied for and the earlier mark contain the word element ‘vital’, which is clearly identifiable and pronounceable, with the result that the phonetic comparison between the signs at issue is entirely relevant.

55      Therefore, given that the signs at issue have in common the identical pronunciation of the word ‘vital’, which is pronounced first in the mark applied for and is the only word to be pronounced in the earlier mark, the Board of Appeal was right to conclude that there was an average degree of phonetic similarity between the signs at issue.

56      In the third place, as regards the conceptual comparison of the signs at issue, the Board of Appeal found, in paragraph 44 of the contested decision, that the relevant English-speaking public would associate the meaning of the signs at issue with something which is ‘essential for life’. Therefore, despite the fact that that meaning is of a weak or non-distinctive character in relation to the goods at issue and the fact that the elements ‘like’ and ‘nature’ do not have a higher degree of distinctiveness, the signs should, according to the Board of Appeal, be regarded as conceptually similar to an average degree.

57      The applicant merely observes that, conceptually, any confusion is ruled out, without putting forward any specific argument to cast doubt on the Board of Appeal’s finding. Accordingly, the applicant’s argument must be rejected as inadmissible for the reasons already set out in paragraph 31 above.

58      It follows that the Board of Appeal was right to conclude that the signs at issue were visually, phonetically and conceptually similar to an average degree.

 Distinctiveness of the earlier trade mark

59      The Board of Appeal found, in paragraph 46 of the contested decision, that the inherent distinctive character of the earlier mark was relatively weak for the relevant English-speaking public, on account of the weak, or even non-distinctive, character of the word element ‘vital’ of that mark.

60      The applicant does not dispute that, from the point of view of the relevant English-speaking public, the earlier mark has a relatively weak distinctive character. However, according to the applicant, in such a situation, even slight differences between the signs at issue are sufficient to create a different overall impression of those signs.

61      The Court will examine the impact of the relatively weak inherent distinctive character of the earlier mark in its assessment of the likelihood of confusion.

 The likelihood of confusion

62      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 the goods or services designated 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).

63      It follows from well-established case-law that, in the context of the overall assessment of the likelihood of confusion, account must be taken of the average consumer’s imperfect recollection of the marks concerned (see order of 12 January 2017, Staywell Hospitality Group v EUIPO, C‑440/16 P, not published, EU:C:2017:16, paragraph 5 and the case-law cited).

64      Moreover, it should be observed 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 in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

65      Finally, where the earlier trade mark and the sign for which registration is sought coincide as a result of an element that is weakly distinctive or descriptive with regard to the goods or services at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 will often lead to a finding that that likelihood does not exist. However, it follows from the case-law of the Court of Justice that a finding that there is such a likelihood of confusion cannot, because of the interdependence of the relevant factors in that regard, be ruled out in advance and in any event (judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55).

66      In the present case, the Board of Appeal found, in paragraphs 48 to 51 of the contested decision, that, taking into account the relevant factors and their interdependence, and the principle of imperfect recollection, there was a likelihood of confusion for a significant part of the relevant public as regards the commercial origin of the goods at issue bearing the signs at issue.

67      The applicant submits that the overall impressions of the signs at issue are different, which excludes the likelihood of confusion. The difference in the colours of the signs at issue and the other visual, phonetic and conceptual differences are sufficient to rule out any likelihood of confusion.

68      EUIPO and the intervener contest those arguments.

69      In that regard, first, it must be observed that, as is apparent from paragraphs 28 to 32 above, the goods covered by the mark applied for and those covered by the earlier mark were correctly found by the Board of Appeal to be identical or similar. Furthermore, as is apparent from paragraphs 49 to 58 above, the signs at issue are visually, phonetically and conceptually similar to an average degree.

70      Secondly, contrary to what the applicant claims, the differences between the signs at issue are not capable of counterbalancing the similarities found and creating different overall impressions of those signs. First, the Court considers that the elements differentiating the signs at issue, namely the word elements ‘like’ and ‘nature’ of the mark applied for and the figurative element in the shape of a circle of the earlier mark, are not capable, on their own, of diverting the relevant public’s attention away from the word element ‘vital’, common to both signs, and counteracting the similarities between them, for the reasons set out in paragraphs 46 and 47 above.

71      Secondly, and more specifically, the applicant’s argument based on a difference in the colours of the signs at issue is likewise not sufficient to create a different overall impression of those signs. Indeed, the graphic representation of the letters in different colours is not a determining factor capable of excluding the impression of similarity between two figurative signs which coincide, as in the present case, in some of their verbal elements (see, to that effect, judgment of 24 October 2017, Keturi kambariai v EUIPO – Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 101 and the case-law cited).

72      Thirdly, as regards the effect of the relatively weak inherent distinctive character of the earlier mark, the Court considers, in the light of the case-law referred to in paragraphs 63 and 64 above, that that fact does not exclude the likelihood of confusion on the part of the average consumer in the present case. In view of the fact that the goods and services covered by the mark applied for and those covered by the earlier mark are either identical or similar and that the signs at issue are visually, phonetically and conceptually similar, the relevant public, whose level of attention to be taken into account is average, is likely to be led, on the basis of an imperfect recollection of the signs concerned, to confuse the commercial origin of the goods to which those signs are affixed.

73      Fourthly, the applicant refers to three judgments which, in its view, demonstrate that even minimal differences between the conflicting signs would be sufficient for the sign, for which registration is sought, to produce a different overall impression. These are the judgments of 22 September 2011, A with two triangular motifs (T‑174/10, not published, EU:T:2011:519); of 21 November 2018, Shenzhen Jiayz Photo Industrial v EUIPO – Seven (SEVENOAK) (T‑339/17, not published, EU:T:2018:815); and of 29 November 2018, Septona v EUIPO – Intersnack Group (welly) (T‑763/17, not published, EU:T:2018:861). However, contrary to what the applicant claims, in those judgments the differences between the signs at issue noted by the Court were not described as ‘small’. On the contrary, those differences created different overall impressions. In the present case, the Court considers, for the reasons set out in particular in paragraphs 70 and 71 above, that the differences between the signs at issue are not sufficient to produce different overall impressions. In any event, the applicant does not explain why it considers that the conclusions to be drawn from those judgments can be applied to the present case. Moreover, as EUIPO correctly submits, the signs which were the subject of those judgments and their factual context are not in any way comparable to those forming the subject matter of the present dispute.

74      In the light of all the foregoing considerations, and in accordance with the principle of interdependence referred to in paragraph 63 above, it must be concluded therefore that, despite the weak distinctive character of the earlier mark for the English-speaking public, the Board of Appeal was right to find that there was a likelihood of confusion as to the origin of the goods on the part of the relevant public.

75      It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and that, therefore, the action must be dismissed.

76      Furthermore, it must be pointed out that the intervener’s second head of claim, requesting the Court to uphold the contested decision, amounts to requesting the dismissal of the action and is thus identical to its first head of claim (see, to that effect, judgment of 6 March 2019, Serenity Pharmaceuticals v EUIPO – Gebro Holding (NOCUVANT), T‑321/18, not published, EU:T:2019:139, paragraph 84 and the case-law cited).

 Costs

77      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.

78      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.

79      As regards the form of order sought by the intervener relating to the costs incurred in the proceedings before the Board of Appeal, it should be recalled that, under Article 190(2) of the Rules of Procedure of the General Court, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, in the present case, since the Board of Appeal has ruled on the apportionment of those costs, they continue to be governed by the contested decision (see, to that effect, judgment of 13 February 2020, Delta-Sport v EUIPO – Delta Enterprise (DELTA SPORT), T‑387/18, not published, EU:T:2020:65, paragraph 155).

On those grounds,

THE GENERAL COURT (Tenth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders St. Hippolyt Holding GmbH to pay the costs.

Kornezov

Kowalik-Bańczyk

Hesse

Delivered in open court in Luxembourg on 20 October 2021.

E. Coulon

 

S. Papasavvas

Registrar

 

President


*      Language of the case: English.