Chefaro Ireland v EUIPO - Laboratoires M&L (NUIT PRECIEUSE) (EU trade mark - Judgment) [2018] EUECJ T-905/16 (12 September 2018)

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(EU trade mark — Invalidity proceedings — International registration designating the European Union — Figurative mark NUIT PRECIEUSE — Earlier national word mark EAU PRECIEUSE — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

Chefaro Ireland DAC, established in Dublin (Ireland), represented by P. Maeyaert and J. Muyldermans, lawyers,

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, D. Walicka and D. Gája, acting as Agents,

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

Laboratoires M&L SA, established in Manosque (France), represented by F. Cordt, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 19 October 2016 (Case R 2596/2015-4), relating to invalidity proceedings between Chefaro Ireland and Laboratoires M&L,

composed of S. Frimodt Nielsen (Rapporteur), President, I.S. Forrester and E. Perillo, Judges,

having regard to the application lodged at the Court Registry on 22 December 2016,

having regard to the response of EUIPO lodged at the Court Registry on 14 March 2017,

having regard to the response of the intervener lodged at the Court Registry on 13 March 2017,

1 On 15 February 2011, the intervener, Laboratoires M&L SA, filed an application for protection in the European Union of international registration No 1063952 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), as amended (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 The international registration in respect of which protection was sought is the following figurative sign:

3 The goods in respect of which registration was sought are 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, and correspond to the following description: ‘Soap; perfumery; perfumes; toilet water; scented water; essential oils; cosmetics; hair lotions; dentifrices; incense; room fragrancing preparations; almond oil; oils for cosmetic purposes; oils for toilet purposes; oils for perfumes and scents; cosmetic preparations for baths; shampoos, shower gels, bubble baths; beauty masks; cosmetic products for skin care; cosmetic creams; cosmetic sets; cosmetic pencils; make-up and make-up removing products; cleansing milk for toilet purposes; lotions for cosmetic purposes; deodorants for personal use; depilatory products; toiletries; sachets for perfuming linen; shaving products; after-shave lotions; cosmetic preparations for slimming purposes; cosmetic sun tanning preparations; cosmetic sunscreen products’.

4 The particulars of the international registration, which are provided for in Article 152(1) of Regulation No 207/2009 (now Article 190(1) of Regulation 2017/1001), were published in Community Trade Marks Bulletin No 32/2011 of 16 February 2011.

5 On 6 August 2014, EUIPO granted protection in the European Union for all of the goods referred to in paragraph 3 above.

6 On 22 September 2014, the applicant, Chefaro Ireland DAC, filed an application under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) for a declaration that the application for protection of the international registration in respect of all the goods referred to in paragraph 3 above was invalid.

7 The grounds relied upon in support of the application for a declaration of invalidity were those referred to in Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and 8(5) of Regulation 2017/1001), on the basis of the earlier French word mark EAU PRECIEUSE, registered on 8 November 1983 under No 1250538 for, inter alia, the following goods in Class 3: ‘Perfumery products; beauty products; soap products; make-up; essential oils; cosmetics; products for hair; dentifrices’.

8 Attached to that application for a declaration of invalidity were several items of evidence adduced in support of the claim that the earlier mark had enhanced distinctiveness or reputation.

9 On 5 November 2015, the Cancellation Division upheld the application for a declaration of invalidity. It noted that the goods in question were identical and that the signs at issue were similar, inasmuch as they both contained the word ‘précieuse’, which, in both marks, was merely allusive. For reasons of procedural economy, the Cancellation Division did not examine the evidence relating to the enhanced distinctiveness or reputation of the earlier mark. It took the view that, taken as a whole, the earlier mark possessed an average degree of inherent distinctiveness and concluded that there was a likelihood of confusion between the marks at issue.

10 On 12 February 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

11 By decision of 19 October 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Cancellation Division.

12 In essence, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (paragraphs 9 to 46 of the contested decision).

13 In particular, the Board of Appeal found that the evidence adduced in order to prove the enhanced distinctiveness of the earlier mark was not sufficient, since some of that evidence had little probative value or showed merely use of the mark, without establishing that the relevant public recognised it, and that the majority of documents produced concerned the period subsequent to the registration of the contested mark and therefore did not relate to the relevant period (paragraphs 23 to 35 of the contested decision).

14 The Board of Appeal also pointed out, in particular, that the common word ‘précieuse’ could not be regarded as more distinctive or dominant in the marks at issue because it is merely a laudatory adjective qualifying two very different nouns, ‘eau’ and ‘nuit’, and that the fact that each of the signs at issue is composed of two words and ends with the word ‘précieuse’ is not sufficient to give rise to a likelihood of confusion, since there are clear and memorable differences between the signs (paragraphs 41 to 43 of the contested decision).

15 Moreover, after finding that the earlier mark had not been proven to have any reputation, the Board of Appeal rejected the application for a declaration of invalidity on the basis of Article 8(5) of Regulation No 207/2009 (paragraphs 47 to 49 of the contested decision).

16 That part of the contested decision is not the subject matter of the present action, which is confined to taking issue with the Board of Appeal’s assessment in the light of Article 8(1)(b) of Regulation No 207/2009.

– order EUIPO and the intervener to bear their own costs and to pay those incurred by the applicant.

19 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. By that single plea, first, the applicant challenges the Board of Appeal’s assessment of the comparison of the signs. Secondly, the applicant submits that the Board of Appeal failed to conduct a proper global assessment of the likelihood of confusion. Thirdly, and in the alternative, should the Court take the view that the signs at issue are similar only to a low degree, the applicant argues that the earlier mark has an enhanced distinctiveness which must be taken into account as part of the global assessment of the likelihood of confusion.

20 Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009 provide 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, 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), the term ‘earlier trade marks’ is to be construed as referring to ‘trade marks registered in a Member State’.

21 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 of the 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). 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).

22 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).

23 In the contested decision, the Board of Appeal took the view, first of all, that the relevant territory for the assessment of the likelihood of confusion was France, given that the earlier right relied on was a French trade mark. In that context, the Board of Appeal also noted that the relevant public was composed of the general public and that its level of attention was average with regard to the goods in question in Class 3, apart from ‘soap, dentifrices; incense; room fragrancing preparations; cosmetic preparations for baths; shampoos, shower gels, bubble baths; deodorants for personal use’. In relation to those goods, the Board of Appeal indicated that the relevant public’s level of attention was probably low, given that they are mass-consumption goods which are used and purchased very frequently.

24 Having regard to the contents of the file, it is appropriate to endorse that definition of the relevant public, which, moreover, as was noted during the hearing, is not disputed by the parties.

25 In the present case, the Board of Appeal noted that the goods in question were identical for the reasons set out in the decision of the Cancellation Division. In that decision, the Cancellation Division indeed noted that the goods in Class 3 covered by the marks at issue are identical, that they are covered, in particular, by both of those marks and that the goods in question covered by the mark applied for are included in a wider category of goods than that which is covered by the earlier mark.

26 Having regard to the contents of the file, it is appropriate to endorse that assessment of the comparison of the goods, which, moreover, as was noted during the hearing, is not disputed by the parties.

27 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).

28 The 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 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).

29 In the present case, after concluding that the contested international registration NUIT PRECIEUSE is a figurative sign composed of written word elements in a standard typeface and that it had to be compared with the earlier mark EAU PRECIEUSE, the Board of Appeal set out its assessment of the dominant elements, the distinctive elements and the visual, phonetic and conceptual comparison of the signs at issue.

30 In paragraph 15 of the contested decision, the Board of Appeal took the view that neither of the signs at issue contained any element more dominant than any other. In that regard, it noted that, even though the word element ‘précieuse’ was the longer word in each sign, that is offset by the fact that the other word elements, ‘nuit’ and ‘eau’, are the first words of each sign.

31 It is important to note that the applicant is also of the opinion that neither the earlier mark nor the contested mark contains any element that is, by itself, likely to dominate clearly the overall impression produced by the signs at issue in such a way as to render the other elements negligible for the purposes of the case-law referred to in paragraph 28 above.

32 The assessment made by the Board of Appeal in the contested decision is therefore not disputed by the parties, as was, moreover, noted during the hearing, and it is necessary, furthermore, to uphold that assessment.

33 In paragraphs 16 to 18 of the contested decision, the Board of Appeal assessed the distinctive elements of the signs at issue in the following manner.

34 First of all, the Board of Appeal pointed out that the word element ‘précieuse’ is immediately understood by the relevant public as an adjective which qualifies the first word of each sign, namely ‘eau’ or ‘nuit’. For that reason, it took the view that to assess the distinctiveness of that word element on its own, rather than in the context of each sign taken as a whole, would represent an ‘artificial dissection’ of the signs at issue. Since the words ‘eau’ and ‘nuit’ are intrinsically bound in each sign to the qualifying adjective ‘précieuse’ which follows those words, each sign has to be read as a whole as an entire expression.

35 Next, as regards EAU PRECIEUSE, the Board of Appeal found that that expression means either ‘cherished water’ or ‘esteemed water’ to the relevant public. For several of the goods in question, namely ‘toilet water; scented water’ in Class 3, the Board of Appeal found that the earlier sign had little or no inherent distinctive character. By contrast, in respect of the other goods, the Board of Appeal took the view that since those goods could not be described as ‘water’, the inherent distinctive character of the earlier sign is average. The Board of Appeal also noted that, although the adjective ‘précieuse’ is used on the French market to qualify ‘crème’ (cream), ‘huile’ (oil), ‘poudre’ (powder) and ‘eau de Cologne’, that use does not render the earlier sign descriptive of those goods which were not described as ‘water’.

36 Lastly, with regard to NUIT PRECIEUSE, the Board of Appeal noted that, since none of the goods at issue is composed of the word ‘nuit’ and since the combination of the word ‘nuit’ with the qualifying adjective ‘précieuse’ cannot be understood as instructional or as a directly descriptive expression, the sign could not be regarded as having a descriptive meaning in respect of those goods.

38 First of all, the applicant submits that the fact that the various elements of a compound mark cannot be artificially dissected does not preclude the distinctiveness of each of those elements from being assessed separately.

39 As regards EAU PRECIEUSE, the word element ‘eau’ has, in its view, a very limited distinctive character in respect of the goods in Class 3. That word is frequently used for cosmetic products, lotions, creams, perfumes, soaps and other goods in that class (see, for example, ‘eau de Cologne’ or ‘eau de toilette’). Such a word may denote the ingredients of those goods. By contrast, the word element ‘précieuse’ may indicate that something is of high value or allude to the consumer’s preference for that particular type of goods. Such an element is suggestive or laudatory due to the fact that it holds positive connotations. It is not devoid of distinctive character since it is not entirely descriptive.

40 With regard to NUIT PRECIEUSE, the applicant submits, the word element ‘précieuse’ has the same meaning as in the earlier mark since it refers to something that is precious or valuable. Thus, it is equally allusive or suggestive, and not descriptive. On the other hand, the use of the word element ‘nuit’ to designate goods in Class 3 is not particularly distinctive as it may designate certain characteristics of goods intended to be used at night.

41 In conclusion, the applicant submits that the common element ‘précieuse’ is not devoid of distinctive character but is at most allusive or suggestive, whereas the word elements ‘eau’ and ‘nuit’ are also not particularly distinctive. The Board of Appeal therefore erred in finding, in paragraph 17 of the contested decision, that the earlier sign had ‘little or no inherent distinctive character’ in relation to ‘toilet water; scented water’.

42 Furthermore, the applicant argues that, even if the finding that the word ‘précieuse’ has a low degree of distinctiveness were correct, that word element is nevertheless ‘dominant’ in both of the signs at issue, even if it is, in itself, unlikely to dominate the marks in such a way as to render the other elements negligible. The word element ‘précieuse’ makes up approximately three quarters of both marks, that is to say, three of the four syllables or, respectively, 9 of the 12 or 13 letters of the marks. The possibly low distinctive character of an element of a compound mark does not necessarily imply that it cannot constitute a dominant element, since it may, in particular because of its position in the sign or its size, make an impression on consumers and be remembered by them.

43 EUIPO and the intervener dispute that argument, referring, in essence, on that point and as regards the remainder of the applicant’s argument, to the reasoning set out by the Board of Appeal in the contested decision.

44 At the outset, it should be noted that the Board of Appeal’s assessment of the distinctive elements of the signs at issue in the contested decision is based on a premiss which is not, in itself, disputed by the applicant. In order to rule out an assessment of each element of the signs at issue individually, the Board of Appeal indicated at the outset that such an assessment would be an ‘artificial dissection’, given that the relevant French public will immediately understand either of those signs as the representation of a noun, respectively ‘eau’ or ‘nuit’, with an identical qualifying adjective, namely the label ‘précieuse’. Thus, although the label ‘précieuse’ constitutes three of the four syllables or, respectively, 9 of the 12 or 13 letters of the signs at issue, as the applicant points out, the presence and meaning of that word after the noun which it complements do indeed allow the conclusion to be reached, as the Board of Appeal did, that the first and second elements of each sign are intrinsically linked and that they will be perceived as a complete phrase which is read and understood in its entirety.

45 Therefore, the applicant’s argument proposing to separate the different elements of each sign in order to establish their intrinsic distinctive character cannot be upheld.

46 Moreover, it is necessary to bear in mind the conclusions reached by the Board of Appeal following its analysis of the distinctive elements of the signs at issue. First, the Board of Appeal indicated that the earlier sign EAU PRECIEUSE had an average inherent distinctive character in respect of the goods in question other than ‘toilet water; scented water’ and that it had little or no inherent distinctive character in respect of those goods.

47 In that regard, and contrary to what the applicant submits, given that the phrase ‘eau précieuse’ could, in fact, describe ‘toilet water’ or ‘scented water’, the Board of Appeal was right to find, in paragraph 17 of the contested decision, that, taken together, the elements ‘eau’ and ‘précieuse’ had a low inherent distinctive character in respect of those goods.

48 Second, the Board of Appeal noted that the contested sign NUIT PRECIEUSE is not devoid of distinctive character in respect of the goods in question, given that it does not have a descriptive meaning in relation to those goods or their characteristics.

49 Such an assessment is not called into question by the applicant’s claim that the word ‘nuit’ is not, in itself, ‘particularly distinctive’, because it may designate certain characteristics of the goods in question, namely that they are intended to be used at night. Assuming that such a claim is founded, which does not seem likely in relation to, for example, cosmetic sunscreen products, which are part of the goods in question, it must be stated that the applicant and the Board of Appeal agree that the word ‘nuit’, which is intrinsically linked to the qualifying adjective ‘précieuse’ (see paragraph 44 above), is not devoid of distinctive character.

50 Consequently, the applicant’s argument relating to the assessment of the distinctive elements of the signs at issue must be rejected as unfounded.

51 As regards the visual and phonetic comparison, the Board of Appeal noted, in paragraph 19 of the contested decision, that ‘the conflicting signs are similar only to the extent that this second word, a laudatory adjective, is identical’.

52 The applicant submits that there is an average degree of visual similarity between the signs at issue. They are both composed of two words in the same order: first a very short word, composed of three and four letters respectively, followed by a longer word of nine letters. The figurative style of the contested mark is not striking and is not sufficient to counteract the visual similarities.

53 The applicant also argues that there is an average, or even high, degree of similarity with regard to the phonetic comparison. The marks will be pronounced as two words, totalling four syllables, with the same rhythm: first a short, monosyllabic word (albeit different words) followed by an identical long word with three syllables.

54 In that regard, the Board of Appeal cannot be criticised for having found that, visually and phonetically, ‘the conflicting signs are similar only to the extent that this second word, a laudatory adjective, is identical’. This is indeed clear from the comparison of the signs at issue. The applicant’s submissions in this regard, on the length and respective number of syllables of the first words and of the second word of the signs at issue, are correct, but do not alter the assessment made in the contested decision.

55 Moreover, while the Board of Appeal did not indicate the exact degree of visual and phonetic similarity between the signs, its silence on that point may be interpreted as meaning that it considered that degree of similarity to be average so far as concerns those two factors for the assessment of similarity (see, by analogy, judgment of 10 November 2016, Polo Club v EUIPO — Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraph 29).

56 In the comparison of signs, their length, the letters of which they are composed and the order of those letters must be taken into account (judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 55). Similarly, in word signs or signs containing a word element, the consumer generally pays greater attention to the first part of the sign, which will be remembered more clearly than the rest of the sign (see judgment of 15 December 2009, Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 40 and the case-law cited).

57 Thus, as the Board of Appeal noted with regard to the assessment of the dominant elements of the signs at issue, even though the element ‘précieuse’ is the longest word or the word containing the most syllables, that is offset by the fact that the shorter words, the elements ‘nuit’ and ‘eau’ respectively, are the first words of each sign.

58 For those reasons, the size alone of the element ‘précieuse’ cannot have the effect of making it dominant in relation to the elements placed at the beginning of the signs.

59 It follows from the foregoing that, at the stage of the global assessment of the likelihood of confusion, it is necessary to take account of the clarifications set out in paragraphs 55 to 58 above. As to the remainder, the applicant’s argument relating to the Board of Appeal’s assessment of the visual and phonetic comparison of the signs at issue must be rejected as unfounded.

60 The Board of Appeal found that the signs at issue were not conceptually similar since the earlier sign refers to the concept of water that is precious, whereas the contested sign refers to the concept of a cherished or esteemed night (paragraph 20 of the contested decision).

61 In that regard, the applicant submits that the signs have a clear conceptual link since they both refer to something that is precious, even though the concepts themselves are not identical. Furthermore, assuming that the word ‘précieuse’ has very little distinctive character in respect of the goods at issue or is regarded as highly allusive, the fact remains that the element common to those signs has the effect of making them both conceptually closer.

62 Here again, inasmuch as the relevant public clearly perceives the meaning of each of the signs at issue as a complete phrase containing a noun, ‘nuit’ and ‘eau’ respectively, with an identical qualifying adjective, namely the label ‘précieuse’, the Board of Appeal was justified in finding that the signs are conceptually different.

63 In the present case, it is the noun rather than the adjective which determines the conceptual perception of the signs at issue, namely EAU PRECIEUSE and NUIT PRECIEUSE. However, as the Board of Appeal noted, while the first sign refers to the concept of water that is precious, the second refers to the idea of a cherished or esteemed night. Those are different concepts and, regard being had to their obvious meaning, the relevant public will not dissect those signs in order to distinguish each element thereof.

64 Since the assessment must, with regard, in particular, to the conceptual similarity of the marks, be based on the overall impression given by those marks, it must therefore be found that the relevant French public will not perceive the word ‘précieuse’ independently in the expressions ‘eau précieuse’ and ‘nuit précieuse’ (see, by analogy, judgment of 6 March 2015, Novomatic v OHIM — Berentzen Mally Marketing plus Services (BLACK JACK TM), T‑257/14, not published, EU:T:2015:141, paragraphs 38 to 41).

65 It follows from the foregoing that the applicant’s argument relating to the assessment of the conceptual comparison of the signs must be rejected as unfounded and, consequently, so must its entire argument relating to the comparison of the signs.

66 The Board of Appeal found, in paragraph 46 of the contested decision, that since, ‘seen as a whole, each of the signs will be easy to distinguish and will be individually memorable to the French public, even for those with a low [level] of attention … there will be no likelihood of confusion within the sense of Article 8(1)(b) [of Regulation No 207/2009], regardless of the fact that the conflicting goods are identical’.

67 In the context of that assessment, the Board of Appeal, in paragraphs 41 to 43 of the contested decision, made the following observations:

‘As explained above, it cannot be said that the element “PRECIEUSE” is the dominant element in either of the complex word marks, the other components of the marks being not negligible but … central with regard to the immediately clear meaning of each.

The only similarity between the signs results from the fact that they both consist of two short nouns qualified by the same adjective “PRECIEUSE”, which will be understood immediately as a laudatory adjective describing a valuable or esteemed night as opposed to valuable or esteemed water: accordingly, to the extent they are visually and aurally similar, this is due solely [to] the use of this laudatory adjective which will be perceived as qualifying two very different nouns.

The finding by the [decision of the Cancellation Division] that “PRECIEUSE” constitutes the most distinctive element in each of the conflicting signs was also incorrect. Firstly, as explained above, the comparison must concern each sign as a whole, and not an artificial dissection of [those signs]. In light of the fact that “PRECIEUSE” will immediately be seen by the relevant public merely to qualify the preceding nouns, each sign must be read as a whole, and this will also be true for the conceptual comparison. Secondly, this is supported by the fact that, whereas “NUIT” alone may indeed be indicative of instructions for the time of application of certain Class 3 goods (i.e. at night), this is certainly not true of “NUIT PRECIEUSE”, which in no way is indicative of when the product is used. Instead, as a whole, the meaning of ‘precious night’ is likely to be associated with a very special evening or night, and thus alludes to a wonderful time, rather than being instructional as to when Class 3 goods should be applied.

In light of all of the above, the fact that each of the conflicting signs is a two-word sign which ends with the word “précieuse” is insufficient to result in a likelihood of confusion for the relevant public, even with regard to those goods for which they will display only a low [level] of attention, and even for identical goods, since the signs are clearly and memorably differentiated.’

68 Moreover, in paragraph 44 of the contested decision, the Board of Appeal noted, in particular, that no evidence had been produced by the applicant to support the claim that the combination formed by the word ‘nuit’, which is a generic term in the field of cosmetic goods used to designate night-care products, and the word ‘précieuse’ would lead the relevant public to think that that mark had been placed on the market by the proprietor of the mark EAU PRECIEUSE, given that undertakings often create variations of their main trade marks in that field. In that context, the Board of Appeal considers that the addition of an adjective after a noun in order to distinguish cosmetic products is a relatively simple commercial naming strategy, and not one to which the applicant has monopoly rights. By way of example, the intervener invoked the marks HUILE PRECIEUSE, ESSENCE PRECIEUSE, ELIXIR PRECIEUX, BAUME PRECIEUX and CONCENTRE PRECIEUX before the Board of Appeal.

69 The applicant submits that, in view of the identity of the goods, the low to average level of attention of the public and the clear degree of similarity between the signs, the Board of Appeal was wrong to find that there was no likelihood of confusion. Furthermore, the Board of Appeal ought to have taken into account the fact that, in the cosmetics sector, it is common to diversify the range of products through the use of sub-brands, that is to say, by using signs that derive from a principal mark and share its common dominant element, in order to distinguish variations or product lines from one another. It should also have taken account of the principle that it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based. The applicant also relies, by analogy, on a judgment of the Court which annulled the decision of a Board of Appeal (judgment of 28 January 2015, BSH v OHIM — Arçelik (AquaPerfect), T‑123/14, not published, EU:T:2015:52).

70 As a preliminary point, it should be noted that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. 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, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

71 Moreover, it follows from the case-law that the global assessment of the likelihood of confusion means that conceptual differences between two signs may counteract the phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraph 98, and of 14 October 2003, Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, EU:T:2003:264, paragraph 54).

72 In the present case, as was noted above, the Board of Appeal found that, despite the identity of the goods and the relevant public’s low level of attention, there are clear and memorable differences between the signs at issue. In particular, the Board of Appeal stressed that the similarities between the signs are limited to the presence of the laudatory adjective ‘précieuse’, which the relevant French public will not perceive individually but exclusively in the context of each of the marks at issue taken as a whole. That adjective therefore merely qualifies the nouns at the beginning of the signs, which are different in each sign. In addition, the signs are not conceptually similar and that factor, by itself, weighs against the existence of a likelihood of confusion, as established by the case-law cited in paragraph 71 above.

73 It was in the light of a global assessment of the different factors to be taken into account that the Board of Appeal concluded that there was no likelihood of confusion.

74 That finding is not called into question by the applicant’s argument that, in the field of cosmetics, it is common to diversity the range of products through the use of sub-brands and, therefore, consumers may believe that the contested mark designates another range of the applicant’s goods which are for use at night. As the applicant points out, such an argument presupposes the existence of a ‘mark’, namely a common denominator perceived by the relevant public as a distinctive sign indicating the commercial origin of the goods. However, in the present case, there is nothing to indicate that the word ‘précieuse’, the word element which is common to both signs, is perceived by the relevant French public as a mark or that the words ‘eau’ and ‘nuit’ are sub-brands in the way that the applicant suggests. During the hearing, the intervener also noted that, in view of the large number of cosmetic products which contain the word ‘précieuse’, several examples of which it put forward before the Board of Appeal, the relevant public is highly unlikely to consider that this is a family of marks indicating the same commercial origin.

75 Therefore, the findings set out by the Board of Appeal in paragraph 46 of the contested decision in order to refute that argument are not incorrect.

76 Likewise, it is necessary to reject the argument alleging that the Board of Appeal erred in finding that the earlier mark was not distinctive and in failing to consider the possibility of establishing a likelihood of confusion even where the earlier mark has only a low level of distinctiveness.

77 As EUIPO submitted before the Court, the conclusion that there was no likelihood of confusion is not based on the earlier mark’s alleged low level of distinctiveness. On the contrary, the Board of Appeal specifically found that the earlier sign had an average level of distinctiveness in respect of all the goods, apart from ‘toilet water’ and ‘scented water’, in respect of which it observed that the earlier mark could be regarded as having little or no inherent distinctive character.

78 In that regard, as the applicant points out, it must be recalled that it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (judgments of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 43 to 47, and of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraphs 58, 68 and 70) and, therefore, as a consequence, the inherent distinctive character of the earlier mark, even if it is low in regard to ‘toilet water’ and ‘scented water’, cannot, however, be regarded as ‘non-existent’.

79 However, the reference made to the earlier mark’s lack of inherent distinctive character is of no consequence. First, it follows from the Board of Appeal’s assessment at the stage of the comparison of the signs, in paragraph 17 of the contested decision, that the inherent distinctive character of the earlier mark with regard to ‘toilet water’ and ‘scented water’, although it cannot be non-existent, remains low. Secondly, at the stage of the global assessment of the likelihood of confusion, the Board of Appeal did not rely on, or even mention, the possible low distinctive character of the earlier mark and that was not a factor which influenced its finding that there was no likelihood of confusion. The decisive factor in reaching that conclusion was the fact that there are clear and memorable differences between the signs, a fact which has not been effectively denied by the applicant. Thirdly and in any event, the earlier mark was not registered solely in respect of ‘toilet water’ and ‘scented water’, but in respect of the wider list of goods referred to in paragraph 7 above.

80 Lastly, the argument based on the analogy with the judgment of 28 January 2015, AquaPerfect (T‑123/14, not published, EU:T:2015:52), must also be rejected, since the signs at issue in that case, namely WATERPERFECT and AQUAPERFECT, both had a very similar meaning.

81 The applicant states that, if it transpires that its action is not upheld on the basis of the first two parts of the single plea in law, it puts forward, in the alternative, a third part. In that regard, it recalls that it presented a ‘summary of the evidence on enhanced distinctiveness’ as part of its observations made before the Board of Appeal. That evidence included, in particular, explanations as to the use and history of the mark going back to 1890 with examples of volumes of sales, advertising expenditure and promotional activities. The applicant also states that that evidence was analysed separately by the Board of Appeal in the contested decision, which came to the conclusion that the probative value of that evidence was limited or that it failed sufficiently to establish recognition of the earlier mark on the part of the relevant public. However, the applicant takes the view that, if the evidence had been assessed overall and as a whole, it would have been clear that the earlier French mark has enhanced distinctiveness as a result of its long-lasting and intensive use.

82 EUIPO takes the view that that argument is inadmissible. For its part, the intervener submits that the applicant did not submit relevant information to the Board of Appeal establishing the enhanced distinctiveness of the earlier mark.

83 It is necessary to examine, first of all, EUIPO’s argument concerning the admissibility of the third part of the single plea in law.

84 Pursuant to Article 76 of the Rules of Procedure of the General Court, an application must contain the pleas in law, the arguments relied on and a summary of those pleas in law. That information must be sufficiently clear and precise in order to allow the other parties to the proceedings before the Court to submit their response and for the Court to rule on the action, if necessary without any other supporting information (judgment of 23 April 2015, Iglotex v OHIM — Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 32).

85 In the present case, as EUIPO pointed out, the complaint put forward in the third part of the single plea in law is not developed. The applicant merely alleges that, in an overall assessment of the evidence presented before the Board of Appeal, ‘it becomes quite apparent’ that the earlier mark has enhanced distinctiveness, without explaining the reasons why the contested decision was wrong in that regard.

86 On that point, it must therefore be found that the applicant does not indicate how exactly the assessment of the evidence adduced before the Board of Appeal is incorrect, even though that detailed assessment set out over several pages, in paragraphs 21 to 35 of the contested decision, rejects that evidence as being essentially devoid of probative value or as having no link to the relevant period.

87 Consequently, in the absence of any arguments on the part of the applicant allowing for any of the findings made by the Board of Appeal in the contested decision to be called into question specifically or making it possible to understand on what basis an overall assessment of all that evidence could be sufficient to call those findings into question, the third part of the single plea in law must be declared inadmissible.

88 Accordingly, the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded in respect of the first and second parts and as inadmissible in respect of the third part.

90 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. 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Chefaro Ireland v EUIPO - Laboratoires M&L (NUIT PRECIEUSE) (EU trade mark - Judgment) [2018] EUECJ T-905/16 (12 September 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T90516.html Cite as: EU:T:2018:527, ECLI:EU:T:2018:527, [2018] EUECJ T-905/16

Court of Justice of the European Communities (including Court of First Instance Decisions)