Eugène Perma France v EUIPO - SPI Investments Group (NATURANOVE) (European Union trade mark - Judgment) [2020] EUECJ T-602/19 (05 October 2020)

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(European Union trade mark – Opposition proceedings – Application for the EU word mark NATURANOVE – Earlier EU word mark NATURALIUM – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

Eugène Perma France, established in Saint-Denis (France), represented by S. Havard Duclos, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 1 July 2019 (Case R 2161/2018-4), concerning opposition proceedings between SPI Investments Group and Eugène Perma France,

composed of V. Tomljenović, President, F. Schalin and P. Škvařilová-Pelzl (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 3 September 2019,

1 On 20 July 2017, the applicant, Eugène Perma France, 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), 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 trade mark in respect of which registration was sought is the word sign NATURANOVE.

3 The goods and services for which registration was sought fall within 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: ‘Cosmetics; Hair lotion; Hair creams; Hair gels; Hair spray; Hair mousse; Shampoo; Shampoo-conditioners; Hair glazes; Hair fixers; Cosmetic hair preparations; Hair-colouring preparations; Bleaching and lightening preparations for the hair; Tints for the hair; Hair dye; Hair balm; Cosmetic products for hairdressing and the modelling of hair; Cosmetic preparations for maintaining and caring for the hair.’

4 The trade mark application was published in European Union Trade Marks Bulletin No 44/2017 of 1 August 2017.

5 On 30 October 2017, the intervener, SPI Investments Group, SL, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

– the Spanish word mark NATURALIUM registered under No 3049880 for goods in Class 3 and corresponding to the following description: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

– international registration designating the European Union No 1166381 for the word mark NATURALIUM for the same goods in Class 3 as those covered by Spanish word mark No 3049880.

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation 2017/1001.

8 On 30 October 2018, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion.

9 On 6 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 1 July 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and set the amount of the costs to be paid by the applicant to the opponent, in respect of the opposition and appeal proceedings, at EUR 1 170.

11 In particular, it found that, in view of the earlier trade marks on which the opponent relied, the relevant public was the public at large in the European Union as a whole and in Spain and that it was appropriate to begin by examining the opposition in relation to the earlier international registration. On that basis, the Board of Appeal took the view that the level of attention of the public at large in the European Union with regard to the goods in question was generally average and even, sometimes, higher, in particular for goods applied to the skin, and that the goods concerned were identical to the goods covered by the earlier trade mark. With regard to the signs at issue, it found that (i) they were visually and phonetically similar to an average degree and that (ii) conceptually, the two signs at issue had no meaning. It added that those signs shared the component ‘natura’, which had a weakly distinctive semantic significance and could not be given too much weight. With regard to the earlier trade mark, it took the view that, as a whole, despite the presence of the weakly distinctive component ‘natura’, the earlier trade mark had a normal degree of inherent distinctiveness. By way of the global assessment of the likelihood of confusion, from the point of view of the public at large in the European Union, first, the Board of Appeal found that, in view (i) of the interdependence principle and the overall similarity between the signs and the fact that the goods were identical, and (ii) of the earlier trade mark’s normal degree of distinctiveness, it was likely that a significant part of that public, even if attentive, could be led to believe that the goods came from the same undertaking or economically linked undertakings. Secondly, the Board of Appeal added, inter alia, that the fact that the component ‘natura’ was allusive as regards the products concerned could not change that finding.

– order EUIPO to pay the costs of these and the earlier proceedings before it.

14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal found that there was a likelihood of confusion between the signs at issue and therefore dismissed its appeal. That single plea in law is divided into three limbs alleging an incorrect assessment, first, of the similarity of the signs at issue, secondly, of the distinctive character of the earlier mark and, thirdly, of the overall analysis of the likelihood of confusion.

15 EUIPO contends that the three limbs of the single plea in law should be rejected and, consequently, that the action should be dismissed.

16 It should be recalled that, under Article 8(1)(b) of Regulation 2017/1001, 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.

17 It is settled case-law that the risk that the public might 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 line of 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).

18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).

19 Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumers of the goods in question in that territory. However, it must be borne in mind that, in order for registration of an EU trade mark to be refused, 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).

The definition of the relevant public and the comparison of the goods

20 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T–256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

21 As was mentioned in paragraph 11 above, in the contested decision, the Board of Appeal found that, in view of the earlier trade marks on which the opponent relied, the relevant public was the public at large in the European Union as a whole and in Spain and that it was appropriate to begin by examining the opposition in relation to the earlier international registration. On that basis, the Board of Appeal took the view that the level of attention of the public at large in the European Union with regard to the goods in question was generally average and even, sometimes, higher, in particular for goods applied to the skin, and that the goods concerned were identical to the goods covered by the earlier trade mark.

22 In the present case, none of the parties, whether or not they claim that the contested decision should be annulled, calls into question the Board of Appeal’s assessments (i) relating to the determination of the relevant public and its level of attention, and (ii) to the comparison of the goods covered by the signs at issue.

23 In the light of the reasoning adopted by the Board of Appeal in the contested decision (see paragraph 11 above), these assessments are well founded and may be endorsed by the Court.

24 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, aural and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T–6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM – Metronia (METRONIA), T–290/07, not published, EU:T:2008:562, paragraph 41).

25 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse 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).

26 In addition, it must be pointed out that the higher or lower level of the distinctive character of the elements common to a mark applied for and an earlier mark is one of the relevant factors in the context of the assessment of the similarity of the signs (see, to that effect, judgments of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T–5/08 to T–7/08, EU:T:2010:123, paragraph 61; of 18 May 2011, Glenton España v OHIM – Polo/Lauren (POLO SANTA MARIA), T–376/09, not published, EU:T:2011:225, paragraph 35; and of 12 July 2012, Pharmazeutische Fabrik Evers v OHIM – Ozone Laboratories Pharma (HYPOCHOL), T–517/10, not published, EU:T:2012:372, paragraph 30).

27 In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T–153/03, EU:T:2006:157, paragraph 35, and of 27 February 2008, Citigroup v OHIM – Link Interchange Network (WORLDLINK), T–325/04, not published, EU:T:2008:51, paragraph 66).

28 In addition, it must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25), the fact remains that, while perceiving a word sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (see, to that effect, judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and of 13 February 2007, RESPICUR, T–256/04, EU:T:2007:46, paragraph 57).

29 In the contested decision, the Board of Appeal found that the two signs at issue both consisted in 10 letters, which formed, respectively, the word element ‘naturalium’for the earlier mark and the word element ‘naturanova’ for the mark applied for.

30 Furthermore, the Board of Appeal considered that the component ‘natura’, common to the two signs at issue, would be understood by a vast majority of citizens of the European Union as an indication of the natural origin of the goods covered by those signs. It therefore considered that the term was allusive and weakly distinctive in relation to those goods, without however being directly descriptive of them. Nevertheless, it recalled that a weakly distinctive element could attract the attention of the relevant public because of its length and position at the beginning of marks.

31 In the present case, it found that the component common to both signs, ‘natura’, appeared at the beginning, to which the consumer is deemed to pay greater attention, and is relatively long, so that it was likely to make an impression on consumers and to be remembered by them. With regard to the ending of each of the two signs at issue, it considered that it could have some meaning for part of the public or no meaning at all for other parts of the public.

32 Under the first limb of the single plea in law, alleging that the Board of Appeal erred in its assessment of the similarity between the signs at issue, as a preliminary point, the applicant observes, in particular, that the higher or lower level of the distinctive character of the elements common to the two signs at issue is one of the relevant factors in the context of the analysis of their similarity and that, for the purpose of assessing the distinctive character of a component making up a mark, account should be taken of the inherent characteristics of the component in question in the light of whether it is at all descriptive of the goods or services concerned.

33 Primarily, the applicant essentially submits that, having regard to the non-distinctive character and purely informative nature of the component ‘natura’, common to the signs at issue, in relation to the cosmetic products described, those signs present, from the point of view of the public of the European Union as a whole, significant visual, phonetic and conceptual differences.

34 Thus, according to the applicant, in all three respects, as well as with regard to the overall impression, the similarity between the signs at issue is low and not average as held by the Board of Appeal.

35 EUIPO disputes the merits of those arguments in support of the first limb of the single plea in law and contends that it should be rejected.

36 In the contested decision, the Board of Appeal held that, having regard to the position at the beginning and in the same order of the component ‘natura’, common to the two signs at issue, and its identical length in terms of the number of letters and syllables, that component would have a greater impact, both visually and phonetically, on the consumer’s mind than the final part. It added that the two components of the differing four letters ‘nove’ and ‘lium’ were not sufficient to counterbalance this similarity, especially as consumers only rarely have the opportunity to make a direct comparison between the marks. It therefore concluded that the signs at issue are visually and phonetically similar to an average degree.

37 The applicant claims that, notwithstanding the positioning of the component ‘natura’ in the initial part of the signs at issue, in view of its limited or even non-existent distinctiveness, the relevant public, which is used to being confronted with that component for cosmetic goods in Class 3, will pay even more attention to the differences between the signs. Thus, according to the applicant, the visual and phonetic comparison focuses, respectively, on the component ‘lium’ of the earlier mark and the component ‘nove’ of the mark applied for. Visually and phonetically, there is no similarity between these two components. Accordingly, the Board of Appeal wrongly concluded that the signs at issue were visually and phonetically similar to an average degree. The signs, in those two areas, should therefore be considered as similar to a low degree.

38 EUIPO contends that the degree of distinctiveness of the component ‘natura’ should be examined in the global assessment of the likelihood of confusion and not at the stage of comparison of those signs. Since the signs at issue coincide in six letters at their beginning and differ in four thereafter, the Board of Appeal was right in finding an average level of visual and phonetic similarity.

39 In the present case, it should be noted, first, that it is apparent from the grounds of the application that, in essence, the applicant complains that the Board of Appeal did not take into account, at the stage of the comparison of the signs at issue visually, phonetically and conceptually, the weakly distinctive character of the component ‘natura’ common to them. In order to conclude that the degree of similarity of the signs at issue is visually, phonetically and conceptually low, the applicant bases its arguments principally on the negligible nature of that component for the purpose of comparing the signs at issue. Moreover, it should be pointed out that, in its response, EUIPO maintains that the degree of distinctiveness of the component ‘natura’ should be examined in the global assessment of the likelihood of confusion and not at the stage of comparison of those signs.

40 Nevertheless, notwithstanding the arguments of each of the two parties, it is apparent, at least implicitly and in essence, from paragraphs 16 to 21 of the contested decision that the Board of Appeal took into account the low degree of distinctiveness of the component ‘natura’, already at the stage of the visual and phonetic comparison of the signs at issue in the present case. Thus, initially, the Board of Appeal held, already in paragraph 17 of that decision, that the common component ‘natura’, although not directly descriptive of the goods in question, was allusive and weakly distinctive. Subsequently, with regard to the visual and phonetic comparison of the signs at issue, it nevertheless considered that, because of its relative length and its position at the beginning of the signs at issue, that component was likely to attract the attention of the relevant public, so that the visual and phonetic similarity between them could not be counterbalanced by the differences between the two endings ‘lium’ and ‘nove’.

41 Therefore, the claim that the Board of Appeal failed to take into account, in the visual and phonetic comparison of the signs at issue, the limited or even non-existent distinctiveness of the common component ‘natura’ has no factual basis.

42 Primarily, with regard to the applicant’s claim that the classification by the Board of Appeal of the degree of visual and phonetic similarity of the signs at issue as average is vitiated by an error of assessment, first, it must be held that, in the case of those signs, which are word signs, their visual and phonetic similarities are strictly limited to the first component common to them, namely ‘natura’. As regards the two endings ‘lium’ and ‘nove’, despite their containing the same number of letters, they are completely different, so that, as the applicant submits, they differ radically, both visually and phonetically.

43 Secondly, the Board of Appeal was wrong to consider that the word component ‘natura’, common to the signs at issue, was likely to attract more attention than the second word component of those signs. It is not disputed that the relevant public will distinguish only two word components in the signs at issue, both of which are word signs. Moreover, the first component ‘natura’ is weakly distinctive, which was explicitly stated by the Board of Appeal and is not contested by the parties either.

44 Therefore, contrary to the decision of the Board of Appeal, notwithstanding the length and position of the component ‘natura’ in the signs at issue, the endings of those signs have a significant distinctive role for the purposes of determining the commercial origin of the goods concerned (see, to that effect, judgment of 23 October 2013, Bode Chemie v OHIM – Laros (sterilina), T‑114/12, not published, EU:T:2013:551, paragraph 31 and the case-law cited). As was noted in paragraph 42 above, the endings of each of the signs at issue, namely ‘lium’ and ‘nove’, do not share any degree of visual or phonetic similarity.

45 In the light of all of the foregoing considerations, it must be held that the degree of visual and phonetic similarity of the signs at issue is low and not average, as the Board erroneously held.

46 Conceptually, the applicant submits that the signs at issue do not have a meaning as such. However, in so far as, as is apparent from the case-law, the consumer perceives the component ‘natura’, common to those signs, as referring to the natural composition of the cosmetic products in Class 3, that component has a weak distinctive character. According to the applicant, the relevant public will therefore pay more attention to the endings of the signs at issue. With regard to the ending of the earlier mark, namely ‘lium’ or ‘ium’, the applicant submits that it will be perceived as a reference to a metal name, such as calcium or magnesium, which generally appears for pharmaceutical goods and beauty products in Class 3. On the other hand, the ending ‘nove’ of the trade mark applied for does not have any particular meaning, except for (i) the Italian or Portuguese consumer, who will perceive it as referring to the figure 9, and (ii) for the consumers of the relevant goods, who will understand the trade mark applied for as being a reference to the trade mark KERANOVE, also owned by the applicant, under which NATURANOVE hair products are intended to be marketed. Therefore, the applicant submits that the signs at issue are conceptually similar to a low degree.

47 With regard to the conceptual comparison of the signs at issue, taken as a whole, EUIPO maintains that since those signs have no meaning, they share only ‘the same weak notion’ attached to the ‘natura’ component, a notion which has just a very low impact.

48 In the present case, as a preliminary point, it should be noted that, as regards the conceptual comparison of the signs at issue, the Board of Appeal did not determine a precise degree of similarity between them. Thus, in paragraph 24 of the contested decision, it merely stated that the signs at issue, taken as a whole, had no meaning and that they ‘share the same weak notion attached to “[natura]”[,] which cannot be given too much weight as its impact will be very low’.

49 Primarily, it is first clear from the wording of paragraph 24 of the contested decision, as cited in the previous paragraph, that the Board of Appeal again, but this time more explicitly, took account of the weakly distinctive nature of the component ‘natura’ common to the signs at issue, right from the stage of assessment of their conceptual similarity. This is confirmed by the reference in that paragraph to paragraphs 93 and 108 of the judgment of 16 December 2015, Perfetti Van Melle Benelux v OHIM – Intercontinental Great Brands (TRIDENT PURE) (T‑491/13, not published, EU:T:2015:979). It should be noted that, in that case, the Court found that the conceptual similarity between the signs at issue stemmed solely from the descriptive element ‘pure’ common to those signs. It had inferred from this that that similarity had a very low impact on the overall impression produced by the marks in question and that that element was therefore not decisive for the global assessment of the likelihood of confusion.

50 Secondly, the applicant itself acknowledges that, as the Board of Appeal found, in particular in paragraph 20 of the contested decision, the endings ‘lium’ and ‘nove’ are capable of having a meaning for at least part of the relevant public. However, it is not disputed that the meaning capable of being perceived from each of those endings is completely different. In any event, even supposing that the relevant public does not perceive any particular meaning from the endings ‘lium’ or ‘nove’, as the Board of Appeal stated in paragraph 24 of the contested decision, by way of the assessment of the similarity of the signs at issue, the signs at issue would then only share the same weak distinctive notion attached to the component ‘natura’, the impact of which is very low.

51 Therefore, in view of the weakly distinctive character of the common component ‘natura’, the conceptual similarity between the signs at issue, taken as a whole, is low.

52 In the light of all of the foregoing considerations, it must be held that the degree of similarity between the signs at issue is visually, phonetically and conceptually low and that the applicant, under the first limb of the single plea in law, rightly submits that the contested decision is vitiated by an error of assessment, in that the Board of Appeal concluded that the degree of visual and phonetical similarity between the signs at issue is average.

53 The global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).

54 As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous factors, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

55 The finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (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).

56 Furthermore, although the Court of Justice did not find it necessary to adopt, in the judgment of 4 March 2020, EUIPO v Equivalenza Manufactory (C‑328/18 P, EU:C:2020:156), the considerations set out by Advocate General Saugmandsgaard Øe in point 83 of his Opinion in that case (C‑328/18 P, EU:C:2019:974), it should be observed that, in that point, the Advocate General noted that the global assessment of the likelihood of confusion must make it possible to determine, in each case, whether the earlier trade mark on which the opposition is based merits protection, in accordance with the objective pursued in Article 8(1)(b) of Regulation 2017/1001. He then stated that the fact that the signs at issue are similar, as are the goods or services in question, cannot, alone, affect the outcome of that assessment. In particular, the distinctive character of that earlier trade mark must be regarded as being of decisive importance in that regard. Finally, he added that, whilst, according to the case-law of the Court of Justice, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion, the opposite is also true. With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor.

57 In the present case, the Board of Appeal held, first, in paragraphs 25 and 26 of the contested decision, that, despite the presence of the weakly distinctive component ‘natura’, the earlier mark as a whole had a normal degree of inherent distinctiveness.

58 Secondly, in paragraph 31 of the contested decision, it held that, in view of the interdependence principle and the overall similarity between the signs, the identity of the goods and the earlier mark’s normal degree of distinctiveness, there was a likelihood of confusion between the signs at issue. In paragraph 32 of that decision, it stated that, in the present case, the weakly distinctive nature of the component ‘natura’, common to the signs, was compensated by the fact that that component appeared at the beginning of the signs and was relatively long.

59 Under the second and third limbs of the single plea in law, which must be examined in the context of the assessment of the likelihood of confusion, first, the applicant alleges that the Board of Appeal erred in its assessment as regards the determination of the inherent distinctive character of the earlier mark. According to the applicant, for the reasons set out in paragraphs 33 and 46 above, that character is weak and not normal as the Board of Appeal erroneously decided by holding that the degree of visual and phonetical similarity between the signs at issue is average. Secondly, the applicant submits that, in essence, notwithstanding that the goods in question are identical, in view of the average or even high level of attention of the relevant public, the low similarity of the signs at issue and the low inherent distinctiveness of the earlier mark, the Board of Appeal wrongly concluded that there was a likelihood of confusion.

60 EUIPO disputes the merits of those arguments in support of the second and the third limbs of the single plea in law.

61 The applicant submits that, in essence, having regard to the allusive and indirectly descriptive character of its component ‘natura’, the earlier mark has a low inherent distinctive character, rather than a normal one, as the Board of Appeal found.

62 EUIPO contests the applicant’s arguments by merely stating that it has not proved that the Board of Appeal made an error in the analysis of the distinctiveness of the earlier mark. The fact that that trade mark may be somewhat allusive cannot prevent its owner from successfully opposing the registration of other, confusingly similar marks.

63 In that regard, first, it should be pointed out that it is not disputed between the parties that, as is apparent from paragraph 25 of the contested decision, in the present case, the assessment of the distinctive character of the earlier mark is based on its inherent distinctive character.

64 Secondly, as was recalled in paragraph 17 above, the likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case. It is settled case-law that the relevant factors also include in particular the distinctive character of the earlier trade mark, which it derives from the inherent qualities of that mark or its reputation. However, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of the identity of the goods in question and of the similarity between the signs at issue (see judgment of 29 April 2015, Hostel Tourist World v OHIM – WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraphs 66 and 67 and the case-law cited).

65 In the present case, it must be held that, in any event, the earlier trade mark has a minimal inherent distinctive character merely because it has been registered (see, to that effect, judgment of 29 April 2015, HostelTouristWorld.com, T‑566/13, not published, EU:T:2015:239, paragraphs 35 and 37 and the case-law cited). Moreover, as is apparent from the case-law, irrespective of whether the earlier mark was allusive or even indirectly descriptive, as the applicant submits, since it is not disputed that that mark, taken as a whole, was devoid of any meaning for the relevant public, it was therefore also distinctive (see, to that effect, judgments of 12 May 2016, Red Lemon v EUIPO – Lidl Stiftung (ABTRONIC), T‑775/14, not published, EU:T:2016:293, paragraph 52, and of 12 May 2016, Red Lemon v EUIPO – Lidl Stiftung (ABTRONICX2), T‑776/14, not published, EU:T:2016:291, paragraph 53).

66 However, it is necessary to question the classification, in paragraph 26 of the contested decision, of the degree of inherent distinctiveness of the earlier mark as ‘normal’. That classification as ‘normal’ is not devoid of ambiguity, since the minimum degree of distinctiveness of any trade mark can, in the light of the case-law referred to in paragraph 54 above, vary in intensity according to the degree of distinctiveness of the mark in question. In the present case, although, as was noted in the previous paragraph, the earlier mark necessarily had, by virtue of its mere registration, a minimum degree of inherent distinctiveness, it cannot be ruled out that that distinctiveness is, as the applicant submits, low.

67 Thus, first, as the applicant submits, without, moreover, being contested by EUIPO, the component ‘natura’ of the earlier mark will be perceived by the relevant public as allusive as regards the natural origin of the goods in question. Therefore, as the Board of Appeal itself held, that component is weakly distinctive.

68 Secondly, it should be emphasised that the earlier mark consists exclusively of a word sign, which itself consists of only two components. Although the first word component, ‘natura’, accounts for 60% of the length of the sign and appears at the beginning, it is nonetheless weakly distinctive, as was found in the previous paragraph. As for the second word component, the ending ‘lium’, although it has a significant distinctive role in relation to the word component ‘natura’, neither its length, which is shorter than that of the first component, nor its visual, phonetic and conceptual characteristics are capable of strengthening the distinctiveness of the earlier mark, taken as a whole, beyond the minimum level which it necessarily has by virtue of its registration.

69 Therefore, taken as a whole, the inherent distinctiveness of the earlier mark is low. Accordingly, the second limb of the single plea in law must be upheld.

70 As regards the allegation that the Board of Appeal erred in its assessment, under the third limb of the single plea in law, as regards the overall analysis of the likelihood of confusion, the applicant submits that, first, in the present case, since the two endings of the signs at issue are different and have no features or concepts in common, they suffice to offset the commonality between the signs that lies in the identical component ‘natura’ which they share and the distinctive character of which is low.

71 Secondly, it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trade marks with similar or identical descriptive components.

72 As regards the analysis of the likelihood of confusion, EUIPO contests the applicant’s arguments by merely referring to the reasoning and conclusions appearing in paragraphs 30 to 32 of the contested decision and by stating that the applicant does not demonstrate the existence of any error made by the Board of Appeal in concluding that there was a likelihood of confusion.

73 In the present case, first, as was noted in paragraph 67 above, the component ‘natura’, common to the signs at issue, will be perceived by the relevant public as an allusion to the natural origin of the goods to which those signs refer. That term should therefore be considered as having weak distinctiveness.

74 Secondly, as was concluded in paragraph 52 above, the degree of similarity between the signs at issue is visually, phonetically and conceptually low. That assessment is mainly due, as was noted in paragraphs 43 and 44 above, to the fact that, because of the weakly distinctive component ‘natura’, the endings of the signs at issue have a significant distinctive role for the purposes of determining the commercial origin of the goods in question. They are therefore not negligible, in the present case, in the overall impression of the likelihood of confusion. However, those endings share no element of visual, phonetic or even conceptual similarity. Accordingly, they are able to compensate for the visual, phonetic and even conceptual similarities that result from the presence, at the beginning, of the component ‘natura’, common to the two signs at issue (see paragraphs 43, 44 and 50 above). Consequently, taken as a whole, the signs at issue show a low level of similarity.

75 Thirdly, as regards the inherent distinctiveness of the earlier mark, as was concluded in paragraphs 66 to 69 above, although that mark has a minimum level of inherent distinctiveness, that distinctiveness is, in the light of the two components of the word sign at issue, weak.

76 In the light of the considerations set out in paragraphs 73 to 75 above, it must be held that the signs at issue are globally different in the overall impression they produce in the mind of the relevant public.

77 Consequently, in the present case, notwithstanding the identity of the goods covered by the signs at issue, it must be concluded, by way of the overall assessment of the likelihood of confusion between those signs, that there is no such likelihood and, consequently, the third limb of the single plea in law must be upheld.

78 In the light of the conclusions drawn in paragraphs 52, 69 and 77 above, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be upheld and, therefore, the contested decision must be annulled.

79 As regards the costs, the applicant claims that EUIPO should be ordered to pay the costs of these proceedings and of the earlier proceedings before EUIPO.

80 As regards the costs incurred in the proceedings before the Court, 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.

81 As regards the costs incurred in the proceedings before EUIPO, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are to be regarded as recoverable costs.

82 Since EUIPO has been unsuccessful, in accordance with the form of order sought by the applicant, EUIPO must be ordered (i) to bear its own costs and to pay those incurred by the applicant before the Court and (ii) to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 July 2019 (Case R 2161/2018-4), relating to opposition proceedings between SPI Investments Group, SL and Eugène Perma France;

2. Orders EUIPO to bear its own costs and to pay those incurred by the applicant, including the costs necessarily incurred for the purposes of the appeal proceedings before the Board of Appeal.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Eugène Perma France v EUIPO - SPI Investments Group (NATURANOVE) (European Union trade mark - Judgment) [2020] EUECJ T-602/19 (05 October 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T60219.html Cite as: EU:T:2020:463, ECLI:EU:T:2020:463, [2020] EUECJ T-602/19

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