JUDGMENT OF THE GENERAL COURT (Second Chamber)
6 September 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark TRUE SKIN – Earlier EU figurative mark TRUE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑576/22,
Bora Creations, SL, established in Andratx (Spain), represented by R. Lange and M. Ebner, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P.‑F. Karamolegkou and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
True Skincare Ltd, established in Ascot (United Kingdom), represented by M. Rieger-Jansen, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, S. Frimodt Nielsen and R. Norkus, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Bora Creations, SL, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2022 (Case R 1712/2021-5) (‘the contested decision’).
Background to the dispute
2 On 20 December 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TRUE SKIN.
3 Following the restriction made in the course of the proceedings before EUIPO, the mark applied for covered goods in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Decorative cosmetics; high lighter; bronzing powders; face powder; rouges; make-up preparations; concealers; make-up bases; make up foundations; skin foundation; cosmetic primers’.
4 On 3 April 2020, the intervener, True Skincare Ltd, 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 earlier EU figurative mark, which is reproduced below and covers goods in Class 3 corresponding to the following description: ‘Cosmetics; soaps; perfumery; cosmetic kits; bubble bath; bath salts; body, face and skincare lotions, gels, oils, milks and creams; night creams and oils; lip balms; lip salves; skincare preparations; non-medicated foot cream; cosmetic hand cream; eye cream; creams for firming the skin; cosmetic preparations for skin firming; anti-aging moisturizer, toner, cleanser, creams and skincare preparations; organic cosmetics; non-medicated cosmetics; body and facial washes and scrubs; facial toner; face and body masks; face serums; body serums; skin cleansers; gels; moisturisers; collagen preparations; facial peel preparations; herbal extracts for cosmetic purposes; cosmetic wipes, tissues and towelettes; cleaning pads impregnated with cosmetics; sun block; SPF sun block preparations, oils and lotions; sun protection lipstick; after sun lotion; nail oils; nail strengthening treatments; cleaner for cosmetic brushes; baby care products; baby lotions, shampoo, soaps, bubble bath; baby powder; baby oils; baby wipes; hair dye; beard dye; beard oils, balm, lotions and tints; hair pomade; pre-shaving preparations; shaving preparations; shaving balm, lotion, foam, soap, creams, gels and oils; aftershave balm; preparations for use after shaving; none being adhesives for affixing false nails’:
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 5 August 2021, the Opposition Division upheld the opposition.
8 On 4 October 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 on the ground that there was, for the purposes of Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion on the part of a significant part of the Spanish-speaking public.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that the parties are summoned to attend a hearing.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits, in essence, that the Board of Appeal made an error of assessment in finding that there was a likelihood of confusion.
14 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
15 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
17 In the present case, the applicant does not dispute the Board of Appeal’s findings that the goods covered by the signs at issue are identical and the inherent distinctiveness of the earlier mark is normal. There is nothing in the case file that makes it possible to call those findings into question.
The relevant public
18 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).
19 In the present case, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory for the purposes of the examination of the likelihood of confusion was that of the European Union. However, the Board of Appeal endorsed and followed the Opposition Division’s approach of focusing in the examination of the likelihood of confusion on the Spanish-speaking part of the relevant public and, in particular, on the part of that public which did not understand English. As regards the composition of the relevant public and its level of attention, the Board of Appeal found that it consisted of the general public, the level of attention of which was at least average.
20 The applicant does not dispute the Board of Appeal’s finding that the relevant public consists of the general public, which has at least an average level of attention. There is nothing in the case file which makes it possible to call that assessment into question.
21 By contrast, the applicant takes the view that the Board of Appeal made an error of assessment in confining its examination to the Spanish-speaking part of the relevant public.
22 EUIPO and the intervener dispute the applicant’s arguments.
23 In that regard, as is apparent from the case-law referred to in paragraph 16 above, it is sufficient, for an EU trade mark to be refused registration, 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. Consequently, contrary to what the applicant submits, the Board of Appeal did not make any error of assessment in focusing, implicitly for reasons of procedural economy, in its examination on the Spanish-speaking public which did not understand English, which constituted, as the Board of Appeal stated, without that being disputed by the applicant, a non-negligible part of the relevant Spanish-speaking public.
24 The applicant’s claim that it is allegedly impossible to break down any word element within the earlier mark and to analyse whether there is a likelihood of confusion on the basis of the meaning of a fictitious word in a language of the European Union cannot call into question the fact that it is open to the Board of Appeal to focus in its assessment on the perception of part of the relevant public in the European Union.
25 Consequently, since the Board of Appeal did not make an error of assessment in focussing in its examination on the Spanish-speaking part of the relevant public which does not understand English, there is no need to examine the applicant’s arguments based on the English-speaking public.
The comparison of the signs
26 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
27 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
The perception of the earlier mark
28 The Board of Appeal found that the earlier mark consisted of a figurative element representing six interconnected triangles and of a larger element placed beneath it, which was read as the word ‘true’.
29 The applicant submits that the Spanish-speaking public which does not understand English does not perceive the element ‘true’ in the earlier mark as referring to the English term ‘true’, which has no meaning for it. According to the applicant, that public perceives that element as referring to the term ‘tre’ and equates it with the misspelt Spanish word ‘tres’, which means ‘three’.
30 EUIPO and the intervener dispute the applicant’s arguments.
31 First of all, it is important to note that it is common ground between the parties that the character which comes second in the element ‘true’ of the earlier mark is perceived by the relevant public as the upper-case letter ‘R’.
32 Next, as regards the character which comes third in the element ‘true’ of the earlier mark, the applicant claims, in essence, that that character is disregarded by the Spanish-speaking public which does not understand English, since the English term ‘true’ has no meaning for it.
33 In that regard, it must be pointed out that it is common ground between the parties that the Spanish-speaking public which does not understand English does not perceive the meaning of the English term ‘true’. It must be stated, first, that it is not obvious that the word ‘true’ is part of the basic English vocabulary which is capable of being understood by a large proportion of consumers in the European Union and, secondly, as the Board of Appeal observed, that that word does not resemble its equivalent in Spanish, namely ‘verdadero’.
34 Although it is true that, when faced with a mark consisting of stylised components, consumers will attempt to identify them in such a way that the sign results in a word or a combination of words which have meaning for them, it cannot, however, automatically be inferred from this that the relevant public must recognise the word element as a whole for it to be found that it will perceive a stylised component as a specific letter (see, to that effect, judgment of 9 February 2017, zero v EUIPO – Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67, paragraph 31).
35 In the present case, since the third character in the element ‘true’ is situated between, on the one hand, the upper-case letter ‘T’ followed by the stylised upper-case letter ‘R’ and, on the other hand, the upper-case letter ‘E’ and it and those letters have the same stylistic appearance in common, the Spanish-speaking public which does not understand English will try to understand that character as a letter. That is particularly so because the average consumer is totally accustomed to the word elements of marks being composed of stylised letters (see judgment of 30 November 2011, SE-Blusen Stenau v OHIM – Sport Eybl & Sports Experts (SE© SPORTS EQUIPMENT), T‑477/10, not published, EU:T:2011:707, paragraph 32 and the case-law cited).
36 Consequently, as the Board of Appeal pointed out, although it cannot be ruled out that part of the Spanish-speaking public which does not understand English might perceive the third character in the element ‘true’ of the earlier mark as the stylised upper-case letters ‘O’ or ‘D’, a significant part of that public will notice, in the context of that mark as a whole and despite the presence of an additional horizontal line, the striking resemblance between that character and the upper-case letter ‘U’. Moreover, the applicant itself points out that that character may be perceived as, inter alia, the upper-case letter ‘U’.
37 Consequently, contrary to what the applicant claims and without it being necessary to examine whether that line of argument is admissible in so far as it is, as the intervener claims, new, it must be held that the Board of Appeal did not make any error of assessment in finding that a significant part of the Spanish-speaking public which does not understand English will read the lower part of the earlier sign as the word ‘true’.
The distinctive and dominant elements in the signs at issue
38 According to the case-law, for the purposes of determining the distinctive character of an element of 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, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask 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).
39 For the purposes of assessing whether one or more given components of a composite trade mark is dominant, 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).
40 As regards the earlier mark, the Board of Appeal found that the figurative element, representing six interconnected triangles, was not negligible. However, it pointed out that a figurative element was less distinctive than a word element and found that the consumer would focus more on the word element ‘true’, which had a normal degree of distinctiveness for the Spanish-speaking public which did not understand English.
41 As regards the mark applied for, the Board of Appeal, in the same way, found that the element ‘true’ had a normal degree of distinctiveness for the Spanish-speaking public which did not understand English. As regards the element ‘skin’, it stated that a significant part of that public would perceive that that term means ‘skin’, despite the fact it is an English term, since it was frequently used in the context of goods in Class 3. It therefore found that, for a significant part of the Spanish-speaking public which did not understand English, the element ‘skin’ had, at best, a low degree of distinctiveness. It concluded that the element ‘true’ in the mark applied for, which also appeared in the initial part thereof, was the most distinctive element in that mark.
42 It must be pointed out that the applicant does not dispute the Board of Appeal’s assessment relating to the distinctive character of the elements comprising the mark applied for. In that regard, it must be stated there is nothing in the case file which makes it possible to call that assessment into question.
43 By contrast, as regards the earlier mark, the applicant submits, in essence, that the Board of Appeal based its analysis of the elements comprising that mark on the incorrect premiss that the element ‘true’ constitutes a word element. It takes the view that, in the light of its stylisation, that element cannot be perceived as a word element and that the figurative element representing six interconnected triangles is, at least, co-dominant with the element ‘true’.
44 EUIPO and the intervener dispute the applicant’s arguments.
45 First, as regards the applicant’s argument that the stylised element ‘true’ in the earlier mark is not a word element, it is sufficient to observe that it has already been held in paragraph 37 above that the relevant public will perceive that element, despite its stylisation, as a word element referring to the term ‘true’.
46 Furthermore, the applicant appears to claim, in support of that argument, that the stylisation of the element ‘true’ in the earlier mark diverts the consumer’s attention from the word element ‘true’, because, otherwise, that mark could not, on account of the descriptiveness of the term ‘true’ for the English-speaking public, have been registered. In that regard, it is sufficient to state that the applicant cannot, in the context of opposition proceedings, rely on the fact that EUIPO should have raised an absolute ground for refusal against the registration of the earlier mark. It must be borne in mind that the absolute grounds for refusal set out in Article 7 of Regulation 2017/1001 do not fall to be examined in opposition proceedings and that that article is not one of the provisions in relation to which the legality of the contested decision must be appraised (see, to that effect, judgment of 8 October 2015, Benediktinerabtei St. Bonifaz v OHIM – Andechser Molkerei Scheitz (Genuß für Leib & Seele KLOSTER Andechs SEIT 1455), T‑78/14, not published, EU:T:2015:768, paragraph 59 and the case-law cited).
47 Consequently, contrary to what the applicant claims and without it being necessary to examine whether that argument is, as the intervener submits, a new argument, it must be held that the Board of Appeal was right in finding, in its assessment of the distinctive and dominant elements of the earlier mark, that that mark was a composite mark consisting of a figurative element and a word element.
48 Secondly, as regards the applicant’s argument that the figurative element of the earlier mark, representing six interconnected triangles, is, at the very least, as important as the word element ‘true’, it must be stated that it is true, as the Board of Appeal found and the applicant submits, that that figurative element is not negligible in the overall impression created by the earlier mark. In view of its shape, size and position within the earlier mark, it cannot be considered to be merely decorative.
49 However, as the Board of Appeal pointed out, the consumer will focus primarily on the word element as a point of reference, because, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name of the mark than by describing the figurative element of that mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
50 Furthermore, it must be borne in mind that, for the purposes of assessing whether there was a likelihood of confusion, the Board of Appeal assessed the perception of the signs at issue from the standpoint of the Spanish-speaking public which did not understand English and which, as has been stated in paragraph 33 above, would not perceive the meaning of the English term ‘true’. The element ‘true’ therefore has a normal degree of distinctiveness for the part of the Spanish-speaking public which does not understand English.
51 Consequently, it is apparent from the foregoing that the Board of Appeal did not make any error of assessment in finding that, as regards the earlier mark, the Spanish-speaking public which did not understand English would attach less importance to the figurative element in that mark than it would to the element ‘true’ in that mark, since the latter element was more distinctive.
The visual, phonetic and conceptual similarity
52 The Board of Appeal found that the signs at issue were visually similar to a below-average degree and phonetically similar to an average degree. From a conceptual standpoint, it found that the comparison between those signs was neutral or that there were no relevant conceptual differences that could help to distinguish between those signs.
53 The applicant submits that errors of assessment were made in the comparison of the signs at issue. In particular, it takes the view that the Board of Appeal erred in finding that those signs at issue had the element ‘true’ in common.
54 EUIPO and the intervener dispute the applicant’s arguments.
55 In the first place, as regards the applicant’s argument that the signs at issue do not have the word element ‘true’ in common, it must be stated that that argument is based on the premiss that the relevant Spanish-speaking public which does not understand English does not perceive that word element in the earlier mark. However, as the General Court has held in paragraph 37 above, that premiss is incorrect.
56 Consequently, contrary to what the applicant claims and without it being necessary to examine whether that argument is, as the intervener submits, new, it must be held that the Board of Appeal was right in finding that the signs at issue had the word element ‘true’ in common.
57 In the second place, as regards the visual similarity, it must be borne in mind that, according to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
58 In the present case, the word element ‘true’ in the earlier mark remains legible, despite the stylisation of the upper-case letters ‘R’ and ‘U’. Consequently, it must be pointed out, as observed by the Board of Appeal, that the only word element in the earlier mark, namely the element ‘true’, is included in its entirety in the mark applied for. The fact that the dominant element in the earlier mark is included in its entirety in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners), T‑310/17, not published, EU:T:2018:344, paragraph 31 and the case-law cited).
59 Furthermore, the element in common ‘true’ appears in the first part of the mark applied for, to which the relevant public generally pays more attention (see, to that effect, judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51).
60 In those circumstances, contrary to what the applicant claims, neither the existence within the mark applied for of another word element, namely the element ‘skin’, which is at best weakly distinctive, nor the presence within the earlier mark of a figurative element, which is less distinctive than the word element, is capable of offsetting the visual similarity resulting from the element in common ‘true’.
61 In the third place, as regards the phonetic similarity, the Board of Appeal was also right in finding that the signs at issue coincided on account of the presence of the word element in common ‘true’, which is the only word element in the earlier mark.
62 It must be borne in mind that, according to the case-law cited in paragraph 58 above, the fact that the dominant element in the earlier mark is included in its entirety in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue.
63 Furthermore, as was stated by the Board of Appeal, the figurative element in the earlier mark has no bearing on the phonetic comparison, a finding which is not, moreover, disputed by the applicant.
64 As regards the phonetic differences between the signs at issue which are connected with the presence, in the mark applied for, of the word element ‘skin’, namely their length and number of syllables, it must be stated that, contrary to what the applicant confines itself to claiming, the presence of that element has only a limited impact on the phonetic comparison in view of its, at best, low degree of distinctiveness.
65 In the fourth place, as regards the conceptual similarity, the Board of Appeal pointed out, first, that the earlier mark had no meaning for the Spanish-speaking public which did not understand English and, secondly, that the concept conveyed by the element ‘skin’ in the mark applied for, which would be understood as referring to the skin, had a limited impact in the light of its, at best, weak distinctive character. It concluded that the signs at issue could not be compared conceptually or that the conceptual comparison remained neutral.
66 In the present case, it must be pointed out that, for the Spanish-speaking public which does not understand English, the earlier mark does not convey any particular meaning, whereas the mark applied for is associated with the concept of ‘skin’ on account of the word element ‘skin’. It must be borne in mind that, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks in question are conceptually different (see judgment of 9 November 2022, Pharmadom v EUIPO – Wellstat Therapeutics (WELLMONDE), T‑601/21, not published, EU:T:2022:687, paragraph 47 and the case-law cited).
67 Accordingly, although the concept in the mark applied for is conveyed by an element which is, at best, weakly distinctive, namely the element ‘skin’, the applicant is right in claiming that the signs at issue are conceptually different.
68 It follows from the foregoing that, although the applicant’s arguments do not make it possible to establish that the Board of Appeal made an error of assessment in finding that the signs at issue were visually similar to a below-average degree and phonetically similar to an average degree, it must, by contrast, be held that the Board of Appeal made an error of assessment in finding that the conceptual comparison of those signs remained neutral, whereas it must be held that they are conceptually different. The impact of that error of assessment will be determined in the global assessment of the likelihood of confusion.
The likelihood of confusion
69 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
70 In the present case, the Board of Appeal concluded that, in the light of the identity of the goods at issue, the average degree of inherent distinctiveness of the earlier mark, the below-average degree of visual similarity and the average degree of phonetic similarity of the signs at issue as well as the finding that the conceptual comparison remained neutral or that there were no relevant conceptual differences that could help to distinguish between the signs at issue, there was a likelihood of confusion on the part of the Spanish-speaking public which did not understand English, the level of attention of which was average.
71 In that regard, first, the applicant submits that the earlier mark is not essentially perceived as the word mark ‘true’, but that it is the figurative representation of that mark which makes it distinctive because, if that were not the case, that mark could not have been registered on account of the descriptiveness of the term ‘true’ for the English-speaking public. However, it must be pointed out that that argument is similar to that set out in paragraph 46 above and must therefore, for the reasons already stated in that paragraph, be rejected.
72 Secondly, as regards the conceptual comparison, which the Board of Appeal incorrectly found to be neutral, whereas the signs at issue are conceptually different, it must be held that that error of assessment does not have any consequences in the context of the analysis of the likelihood of confusion. As the Board of Appeal pointed out and as the Court has held in paragraph 67 above, the concept is conveyed by one of the two word elements in the mark applied for, namely the element ‘skin’, which is understood as referring to the skin and which is, at best, weakly distinctive with regard to the goods at issue, with the result that the conceptual dissimilarity cannot counteract the overall similarity between the signs at issue.
73 Consequently, in spite of the error of assessment which was made as regards the conceptual comparison of the signs at issue and although there are certain differences between those signs, it must be held that, following a global assessment, the Board of Appeal was right in finding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of the relevant public.
74 It follows from all of the foregoing that the single plea must be rejected and the action must therefore be dismissed in its entirety.
Costs
75 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.
76 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend a hearing, it is appropriate, as no hearing has taken place, to order EUIPO to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Bora Creations, SL to bear its own costs and to pay those incurred by True Skincare Ltd;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Marcoulli | Frimodt Nielsen | Norkus |
Delivered in open court in Luxembourg on 6 September 2023.
V. Di Bucci | | M. van der Woude |