Dr. Rudolf Liebe Nachfolger v EUIPO - Bit Beauty (ayuna LESS IS BEAUTY) (EU trade mark - Judgment) [2023] EUECJ T-490/22 (11 October 2023)

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(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark ayuna LESS IS BEAUTY – Earlier EU word mark AJONA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

Dr. Rudolf Liebe Nachfolger GmbH & Co. KG, established in Leinfelden-Echterdingen (Germany), represented by E. Stolz, U. Stelzenmüller, H. Meyerfeldt and J. Weiser, lawyers,

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

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

Bit Beauty, SL, established in Barcelona (Spain), represented by J. Gallego Jiménez, E. Sanz Valls, P. Bauzá Martínez and Y. Hernández Viñes, lawyers,

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

1 By its action under Article 263 TFEU, the applicant, Dr. Rudolf Liebe Nachfolger GmbH & Co. KG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2022 (Case R 982/2021-2) (‘the contested decision’).

2 On 4 February 2019, the intervener, Bit Beauty SL, obtained from the International Bureau of the World Intellectual Property Organization (WIPO) the international registration designating the European Union in respect of the figurative mark reproduced below:

3 On 28 March 2019, EUIPO received notification of the international registration designating the European Union, pursuant to the fourth sentence of Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), as amended on 12 November 2007.

4 The goods in respect of which protection 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; perfumed soaps; facial soaps; cosmetic soaps; scented soaps; toilet soap; cream soaps; skin soap; natural perfumery; oils for perfumes and scents; perfumery; deodorants for human beings or for animals; toiletries; body cleaning and beauty care preparations; massage oils; cosmetics; make-up preparations; hair preparations and treatments; bath preparations; soaps and gels; skin, eye and nail care preparations; beauty care cosmetics; perfumed creams; body cream; face creams for cosmetic use; dentifrices; hair lotions; tonics [cosmetic]; cosmetic moisturisers; powder for make-up; hydrating masks; moisturising concentrates [cosmetic]; after sun moisturisers; moisturising creams, lotions and gels; anti-aging creams; anti-ageing serum; anti-aging moisturizers; facial scrubs [cosmetic]; beauty masks; cleaning masks for the face; beauty masks; facial masks; face and body masks’.

5 On 11 July 2019, the applicant filed a notice of opposition to registration of the sign applied for in respect of the goods referred to in paragraph 4 above.

6 The opposition was based on the earlier EU word mark AJONA, filed on 8 August 2003 and registered on 11 April 2005, covering goods in Class 3 and corresponding to the following description: ‘Dentifrices’.

7 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).

8 On 30 March 2021, the Opposition Division partially upheld the opposition in respect of the goods in Class 3 and corresponding to the following description: ‘Soap; perfumed soaps; facial soaps; cosmetic soaps; scented soaps; toilet soap; cream soaps; skin soap; toiletries; body cleaning and beauty care preparations; cosmetics; bath preparations; soaps and gels; skin, eye and nail care preparations; beauty care cosmetics; perfumed creams; body cream; face creams for cosmetic use; dentifrices; tonics [cosmetic]; cosmetic moisturisers; hydrating masks; moisturising concentrates [cosmetic]; after sun moisturisers; moisturising creams, lotions and gels; anti-aging creams; anti-ageing serum; anti-aging moisturizers; facial scrubs [cosmetic]; beauty masks; cleaning masks for the face; beauty masks; facial masks; face and body masks’.

9 On 28 May 2021, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had upheld the opposition. In its response, lodged on 27 September 2021, the applicant brought a cross-appeal against the decision of the Opposition Division in so far as that decision was unfavourable to it.

10 By the contested decision, the Board of Appeal partially annulled the decision of the Opposition Division, to the extent that the international registration designating the European Union had been refused in respect of the goods in Class 3 and corresponding to the following description: ‘Soap; perfumed soaps; facial soaps; cosmetic soaps; scented soaps; toilet soap; cream soaps; skin soap; body cleaning preparations; soaps and gels; bath preparations; skin, eye and nail care preparations; perfumed creams; body cream; face creams for cosmetic use; tonics [cosmetic]; cosmetic moisturisers; hydrating masks; moisturising concentrates [cosmetic]; after sun moisturisers; moisturising creams, lotions and gels; anti-aging creams; anti-ageing serum; anti-aging moisturizers; facial scrubs [cosmetic]; beauty masks; cleaning masks for the face; beauty masks [repetition]; facial masks; face and body masks’, and dismissed the cross-appeal brought by the applicant.

11 The Board of Appeal held that there was no likelihood of confusion in respect of those goods, which have only a low degree of similarity to the ‘dentifrices’ covered by the earlier mark.

– uphold the opposition in its entirety and reject the international registration designating the European Union;

– order EUIPO and, as the case may be, the intervener, to pay the costs of the present proceedings as well as those incurred in respect of the proceedings before the Board of Appeal of EUIPO.

– order the applicant to pay the costs in the event that a hearing is convened.

– order the applicant to pay the costs of the present proceedings as well as those incurred in respect of the proceedings before the Board of Appeal of EUIPO.

15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea is divided into four parts, alleging, first, an incorrect assessment of the similarity of the goods in question; second, an incorrect assessment of the comparison of the signs at issue; third, an incorrect assessment of the distinctiveness of the earlier mark; and, fourth, an incorrect assessment of the likelihood of confusion.

16 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.

17 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).

18 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

The first part, alleging an incorrect assessment of the similarity of the goods in question

19 In paragraph 42 of the contested decision, the Board of Appeal endorsed the Opposition Division’s assessment that ‘natural perfumery; oils for perfumes and scents; perfumery; deodorants for human beings or for animals; massage oils; make-up preparations; hair preparations and treatments; hair lotions; powder for make-up’ covered by the sign applied for had a different nature, method of use and purpose from the ‘dentifrices’ covered by the earlier mark, consisting of pastes for cleaning teeth, and were therefore different.

20 In paragraph 32 of the contested decision, the Board of Appeal found that ‘soap; perfumed soaps; facial soaps; cosmetic soaps; scented soaps; toilet soap; cream soaps; skin soap; body cleaning preparations; soaps and gels; bath preparations; skin, eye and nail care preparations; perfumed creams; body cream; face creams for cosmetic use; tonics [cosmetic]; cosmetic moisturisers; hydrating masks; moisturising concentrates [cosmetic]; after sun moisturisers; moisturising creams, lotions and gels; anti-aging creams; anti-ageing serum; anti-aging moisturizers; facial scrubs [cosmetic]; beauty masks; cleaning masks for the face; beauty masks [repetition]; facial masks; face and body masks’ covered by the sign applied for had a similar purpose, but not related to dental hygiene, to the ‘dentifrices’ covered by the earlier mark. Furthermore, their distribution channels are the same. It follows that they are similar to a low degree to the ‘dentifrices’ covered by the earlier mark.

21 As regards the goods referred to in paragraph 19 above, the applicant argues, in essence, that they share the same purpose, the same usual origin and the same distribution channels and end users, with the result that they are similar to an average degree.

22 The applicant criticises the Board of Appeal for having applied incorrect criteria in assessing the purpose of the goods, by adopting a narrow interpretation of that purpose. According to the applicant, the goods share the same purpose not only where they can solely be used for the same needs, such as cleaning teeth, but also where they coincide in their purpose of keeping a part of the body clean and enhance its attractiveness. The goods in question can be used alongside each other for personal hygiene and share the same purpose of beautification.

24 According to settled case-law, in assessing the similarity of the goods or services covered by the marks at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

25 The ‘dentifrices’ covered by the earlier mark are oral hygiene products which are intended, inter alia, to preserve the health of teeth, whereas ‘natural perfumery; oils for perfumes and scents; perfumery; deodorants for human beings or for animals; massage oils; make-up preparations; hair preparations and treatments; hair lotions; powder for make-up’ are used for cosmetic purposes rather than for hygienic purposes.

26 It is true that it cannot be ruled out that some of the goods covered by the sign applied for and referred to in paragraph 19 above are used for both cosmetic and hygiene purposes. However, any relationship between the goods is insufficient to establish their similarity (judgment of 16 November 2006, Jabones Pardo v OHIM – Quimi Romar (YUKI), T‑278/04, not published, EU:T:2006:351, paragraph 57).

27 The applicant cannot rely on the judgment of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER) (T‑418/03, not published, EU:T:2007:299) to maintain that the goods in question share the same purpose, since the goods in question in that case were not the same as in the present case. In that judgment, the groups of goods to be compared were, on the one hand, ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions; dentifrices; toiletries’ and, on the other, ‘cosmetics’ and ‘perfumes and cosmetics’, with the result that dentifrices were included in the broader category of ‘cosmetics’. In the present case, as regards ‘cosmetics’, the Board of Appeal upheld the applicant’s opposition.

28 Nor can the applicant validly criticise the Board of Appeal for having disregarded the fact that the goods in question coincide in their distribution channels. It is apparent from paragraph 35 of the contested decision that the Board of Appeal found that it could not be ruled out that the goods in question are sold in the same sales outlets, such as drugstores, pharmacies or supermarkets.

29 However, as the Board of Appeal correctly observes, the fact that the goods in question may be sold in the same commercial establishments, such as drugstores, pharmacies or supermarkets, is of no particular importance, since very different kinds of goods may be found in such sales outlets, without consumers automatically believing that they have the same commercial origin (see, to that effect, judgments of 24 March 2010, 2nine v OHIM – Pacific Sunwear of California (nollie), T‑363/08, not published, EU:T:2010:114, paragraph 40, and of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 83 and the case-law cited).

30 Furthermore, as regards the fact put forward by the applicant that the goods referred to in paragraph 19 above all consist of cosmetic products within the meaning of Article 2(1)(a) of Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products (OJ 2009 L 342, p. 59), it should be recalled that the classification of goods according to other rules of EU law, such as Regulation No 1223/2009, is not in principle decisive with regard to their classification in the context of EU trade mark law (see, to that effect, judgment of 15 September 2021, Albéa Services v EUIPO – dm-drogerie markt (ALBÉA), T‑852/19, not published, EU:T:2021:569, paragraph 92 and the case-law cited).

31 Lastly, as regards the applicant’s argument that many cosmetic manufacturers, such as Lavera and Retterspitz, produce various goods covering the entire range of cosmetics and offer those goods under the same mark, it must be stated that, as regards goods which target the general public, those two examples are not such as to establish that a large number of the manufacturers of the goods in question are the same. Moreover, the two undertakings referred to by the applicant specialise in the production of products based on natural ingredients, with the result that they cannot be regarded as representative of the sector. In those circumstances, the applicant has failed to show that the relevant public considers it usual that manufacturers of ‘natural perfumery; oils for perfumes and scents; perfumery; deodorants for human beings or for animals; massage oils; make-up preparations; hair preparations and treatments; hair lotions; powder for make-up’ also market ‘dentifrices’ under the same trade mark.

32 It follows that the Board of Appeal did not err in finding, in paragraph 43 of the contested decision, that the goods referred to in paragraph 19 above were different from the ‘dentifrices’ covered by the earlier mark.

33 The applicant claims, in essence, that the goods referred to in paragraph 20 above are similar to an average degree, given that they are complementary, have the same purpose and coincide in their distribution channels.

35 In that regard, first, it must be stated, as EUIPO did, that, in the judgment of 13 September 2010, Procter & Gamble v OHIM – Prestige Cosmetics (P&G PRESTIGE BEAUTE) (T‑366/07, not published, EU:T:2010:394, paragraph 57), referred to by the applicant, the General Court did not find an average degree of similarity between dentifrices, on the one hand, and soaps, bath foam and other lotions referred to in the earlier registration in question in the case which gave rise to that judgment, on the other. It merely found that the Board of Appeal’s conclusion in that case that the goods covered by the marks at issue were similar was not vitiated by error.

36 Secondly, the goods or services which are complementary are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or supply of those services lies with the same undertaking (order of 8 January 2019, Emcur v EUIPO, C‑533/18 P, not published, EU:C:2019:2, paragraphs 5 and 6; see, also, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). However, the fact that consumers regard a product as a complement of or accessory to another is not sufficient for them to believe that those products have the same commercial origin. For that to be the case, consumers would also have to consider it usual for those products to be sold under the same trade mark, which normally implies that a large number of producers or distributors of those products are the same (see judgments of 13 February 2014, Demon International v OHIM – Big Line (DEMON), T‑380/12, not published, EU:T:2014:76, paragraph 37 and the case-law cited, and of 9 July 2015, Nanu-Nana Joachim Hoepp v OHIM – Vincci Hoteles (NANU), T‑89/11, not published, EU:T:2015:479, paragraph 35 and the case-law cited; see also, to that effect, order of 12 September 2022, Biologische Heilmittel Heel v EUIPO – Esi (TRAUMGEL), T‑130/22, not published, EU:T:2022:574, paragraph 33).

37 In the present case, ‘dentifrices’ are not indispensable or important for the use of ‘soap; perfumed soaps; facial soaps; cosmetic soaps; scented soaps; toilet soap; cream soaps; skin soap; body cleaning preparations; soaps and gels; bath preparations; skin, eye and nail care preparations; perfumed creams; body cream; face creams for cosmetic use; tonics [cosmetic]; cosmetic moisturisers; hydrating masks; moisturising concentrates [cosmetic]; after sun moisturisers; moisturising creams, lotions and gels; anti-aging creams; anti-ageing serum; anti-aging moisturizers; facial scrubs [cosmetic]; beauty masks; cleaning masks for the face; beauty masks [repetition]; facial masks; face and body masks’ or vice versa. On the contrary, the ‘dentifrices’ covered by the earlier mark may be used independently of the goods covered by the sign applied for. The mere fact that those goods are used for daily body care does not make it possible to establish a link of complementarity within the meaning of the settled case-law cited in paragraph 36 above.

38 Thirdly, the Board of Appeal was correct in observing that, unlike the ‘dentifrices’ covered by the earlier mark, the purpose of the goods covered by the sign applied for, referred to in paragraph 20 above, was not linked to dental hygiene.

39 Fourthly, as regards the applicant’s argument that the goods in question coincide in their distribution channels, it is sufficient to refer to paragraph 29 above.

40 It follows that the Board of Appeal did not err in finding, in paragraph 32 of the contested decision, that the goods covered by the signs at issue, referred to in paragraph 20 above, were similar only to a low degree.

41 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. As is apparent from the case-law, the visual, phonetic and conceptual aspects are relevant (see, by analogy, judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).

42 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 signs at issue 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, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41).

43 The applicant does not dispute the Board of Appeal’s finding in paragraph 58 of the contested decision that it is impossible to carry out a conceptual comparison, given that the signs at issue, taken as a whole, have no meaning.

44 The applicant does not dispute the Board of Appeal’s identification of the dominant and distinctive element of the sign applied for. However, according to the applicant, the signs at issue display at least an average degree of visual similarity. The word elements ‘ajona’ and ‘ayuna’ differ only in their middle, in the letter groups ‘jo’ and ‘yu’, which, moreover, are visually almost identical.

46 In the present case, the sign applied for consists of the word elements ‘ayuna’, stylised in a font that resembles handwriting, and ‘less is beauty’, positioned below the letter group ‘una’ of the word element ‘ayuna’ and stylised in a different and smaller font, and of a figurative element representing a stylised leaf or tree, placed above the word elements. As for the earlier mark, it consists of the word element ‘ajona’.

47 The dominant element of the sign applied for, ‘ayuna’, and the earlier mark are both composed of five letters, share three letters placed in the same position, namely the initial letter ‘a’ and the final letters ‘n’ and ‘a’, and are distinguished by the second and third letters, namely ‘jo’ in the earlier mark and ‘yu’ in the sign applied for. In paragraph 55 of the contested decision, the Board of Appeal duly took those similarities into account. It even found that the handwritten font used in the sign applied for reduced the difference between the style of the letters ‘j’ and ‘y’, on the one hand, and ‘o’ and ‘u’, on the other. Although it nevertheless concluded that the signs at issue were visually similar to a ‘below-average’ degree, this is in particular on account of the fact that the signs at issue also differ in the additional elements of the sign applied for, namely the figurative element and the slogan less is beauty, even though those elements have only a limited impact on the consumer.

48 As a preliminary point, it must be observed that although, in paragraph 56 of the contested decision, the Board of Appeal classified the degree of visual similarity as ‘below-average’, it must be understood that it found that the signs at issue displayed a low degree of visual similarity.

50 First, having regard to the overall impression produced by the signs at issue, the fact that they differ in the presence, in the sign applied for, of the word elements ‘less is beauty’ and the figurative element, notwithstanding their secondary nature, cannot be disregarded in the assessment of the visual similarity of those signs.

51 Secondly, the case-law relied on by the applicant in paragraph 29 of the application cannot be transposed to the present case. According to that case-law, where a figurative mark containing word elements is visually compared with a word mark, the marks are considered to be visually similar if they have in common a significant number of letters in the same position and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different type fonts, in italics or bold, in lower case or upper case, or in colour (judgments of 24 October 2017, Keturi kambariai v EUIPO – Coffee In (coffee inn), T‑202/16, EU:T:2017:750, paragraph 101, and of 23 February 2022, Lackmann Fleisch- und Feinkostfabrik v EUIPO – Schuju (Хозяйка), T‑185/21, not published, EU:T:2022:89, paragraph 54). Unlike the signs at issue in the cases which gave rise to those judgments, the word element of the sign applied for in the present case is considerably stylised and gives the impression of being handwritten, with the result that the overall impression of the sign applied for is clearly different from that of the earlier mark.

52 Thirdly, the applicant’s argument that the earlier mark, as a word mark, enjoys protection in all fonts, with the result that account must be taken of the fact that the differences between the signs at issue are barely perceptible and even less memorable if those signs were compared in the same font, cannot succeed either. It is true that the proprietor of a word mark is entitled to use it in different scripts (see judgment of 28 April 2021, Klaus Berthold v EUIPO – Thomann (HB Harley Benton), T‑284/20, not published, EU:T:2021:218, paragraph 106 and the case-law cited). However, the examination of the similarity of the marks at issue takes into consideration those marks in their entirety, as they have been registered or as they have been applied for. A word mark is a mark consisting entirely of letters, of words or of groups of words, written in printed characters in normal font, without any specific figurative element. The protection which results from registration of a word mark relates to the word referred to in the application for registration and not the specific figurative or stylistic aspects which that mark might have. The graphic form which the earlier word sign might have in the future must not, therefore, be taken into account for the purposes of the examination of similarity (see judgment of 2 December 2009, Volvo Trademark v OHIM – Grebenshikova (SOLVO), T‑434/07, EU:T:2009:480, paragraph 37 and the case-law cited).

53 It follows that the Board of Appeal was correct in finding, in paragraph 56 of the contested decision, that the signs at issue displayed a low degree of visual similarity.

54 In paragraph 57 of the contested decision, the Board of Appeal found that the pronunciation of the signs at issue coincided in the sound of the initial letter ‘a’ and the last syllable ‘na’ and, for the German-speaking part of the relevant public, in the sound of the letters ‘j’ and ‘y’ and differed as regards the sound of the short back vowels ‘o’ and ‘u’. According to the Board of Appeal, the slogan has a limited impact on the comparison of the signs, with the result that the signs at issue are phonetically similar to an ‘average to above-average’ degree. It must be concluded that, by the words ‘average to above-average’, the Board of Appeal intended to indicate, as EUIPO confirmed at the hearing, that the signs at issue displayed an average to high degree of phonetic similarity.

55 The applicant submits, in essence, that the signs at issue display a high degree of phonetic similarity. First, those signs consist of the same number of syllables. Secondly, the overall phonetic impression of the signs at issue is almost identical due to the identical intonation and the same rhythm of speech of the earlier mark and the element ‘ayuna’ of the sign applied for.

57 According to the case-law, the phonetic reproduction of a composite sign corresponds to that of all of its word elements, regardless of their specific graphic features (see judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 53 and the case-law cited).

58 In the present case, the applicant correctly submits that the Board of Appeal did not expressly find that the signs at issue both contain three syllables and share the same rhythm and the same intonation. However, signs which coincide in their structure and their number of syllables do not always display a high degree of similarity.

59 It follows from the case-law that the phonetic comparison of the signs must be carried out by taking into account the overall impression which they create, as the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 25 March 2009, L’Oréal v OHIM – Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 17 and the case-law cited).

60 As regards the applicant’s reference to the judgment of 17 November 2005, Biofarma v OHIM – Bausch & Lomb Pharmaceuticals (ALREX) (T‑154/03, EU:T:2005:401, paragraphs 55 and 57), the present case does not differ decisively from the judgment cited solely because, as the intervener suggests, the word marks at issue in the case which gave rise to that judgment were composed of two syllables, and not of three as in the present case. However, the factual context at issue in the case that gave rise to the judgment of 17 November 2005, ALREX (T‑154/03, EU:T:2005:401), differs from that of the present case. Unlike the case which gave rise to that judgment, in which the signs at issue consisted of two syllables with the same vowels and differed only in single letter, the signs at issue in the present case do not share the same vowels, but are distinguished by the vowel ‘o’ in the earlier mark and the vowel ‘u’ in the sign applied for.

61 It must be noted, as EUIPO did, that that dissimilarity is reinforced by the fact that, as regards the accentuation of the signs at issue, the German-speaking public which will pronounce the letters ‘y’ and ‘j’ in the same way will emphasise the second vowel, namely ‘o’ and ‘u’.

62 Furthermore, although it is true that the slogan less is beauty has only a limited impact, it is not, however, completely negligible as regards the comparison of the signs at issue. By contrast, the signs at issue in the case which gave rise to the judgment of 17 November 2005, ALREX (T‑154/03, EU:T:2005:401, paragraphs 55 and 57), were both word marks comprising a single two-syllable word.

63 It follows that the Board of Appeal did not err in finding, in paragraph 57 of the contested decision, that the signs at issue were phonetically similar to an average to high degree.

64 In the light of the foregoing, the second part of the single plea must be rejected.

The third part, alleging an incorrect assessment of the distinctiveness of the earlier mark

65 In paragraph 65 of the contested decision, the Board of Appeal found that the earlier mark, which does not convey any meaning in relation to the goods it designates, had a ‘normal’ degree of inherent distinctiveness. The applicant does not dispute that finding.

66 Moreover, the Board of Appeal was of the opinion that the evidence submitted by the applicant was insufficient to conclude that the earlier mark had enhanced distinctiveness acquired through use in respect of ‘dentifrices’.

67 The applicant takes the view, in essence, that the evidence which it submitted, and in particular the survey, prove the enhanced distinctiveness of the earlier mark.

68 First, the applicant claims that, in addition to the fact that a degree of distinctiveness of 16.8% is not a ‘fairly low’ percentage, since that percentage may be regarded as rather high on the mass market for toothpaste, the Board of Appeal applied an incorrect threshold by apparently requiring the same degree of distinctiveness which is required in respect of the reputation of a mark. Moreover, the Board of Appeal did not take account of the fact that the degree of awareness of the earlier mark relating to toothpaste amounts to 38.6%, as set out in the survey carried out in December 2019, contained in the expert opinion of 15 January 2020, submitted by the applicant before the Board of Appeal. On the German market for toothpaste, the earlier mark occupies twelfth position.

69 Secondly, the applicant observes that the survey proves that the earlier mark enjoys an enhanced degree of distinctiveness due to intensive use since 1952. According to the applicant, there is no reasonable doubt that the results of that survey carried out in July 2019 are also valid for February 2019. Additional evidence was submitted showing that sales figures had increased significantly between 2012 and 2019.

71 The existence of a high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation 2017/1001. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, judgments of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35, and of 15 September 2021, ALBÉA, T‑852/19, not published, EU:T:2021:569, paragraph 82 and the case-law cited).

72 In order to have an unusually high level of distinctiveness as a result of the public’s potential recognition of it, an earlier mark must, in any event, be familiar to the public on the filing date of the trade mark application or, as the case may be, on the priority date relied on in support of that application (see judgment of 12 July 2006, VITACOAT, T‑277/04, EU:T:2006:202, paragraph 38 and the case-law cited).

73 It follows from the case-law that material may be taken account of which, although subsequent to the date of filing the application, enabled the drawing of conclusions on the situation as it was on that date (order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 41, and judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 71). Consequently, it is not in principle inconceivable that a survey compiled some time before or after that date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue. Furthermore, its evidential value depends on the survey method used (see judgment of 12 July 2006, VITACOAT, T‑277/04, EU:T:2006:202, paragraph 38 and the case-law cited).

74 The applicant submitted several items of evidence before the Board of Appeal to substantiate the relevant public’s recognition of the earlier mark, namely (i) an expert opinion of 15 January 2020 containing the results of a survey carried out in December 2019; (ii) an extract from the applicant’s history which seeks to show that the toothpaste concentrate of the AJONA brand has been marketed since 1952; (iii) a chart containing market share figures in 2018; (iv) a chart showing data relating to the preferred toothpastes of Germans in 2019; (v) a statement of the applicant’s managing director; (vi) extracts from articles; (vii) packaging and printing samples; (viii) invoices; and (ix) a collection of advertising material and advertorials.

75 As the Board of Appeal correctly pointed out in paragraph 75 of the contested decision, even taking account, in the context of an overall assessment of the relevant public’s recognition of the earlier mark, of all that evidence, that evidence is not sufficient to demonstrate that the earlier mark has enhanced distinctiveness.

76 In the first place, the expert opinion of 15 January 2020 is based on a survey conducted, as is apparent from page 5 of the expert opinion, between 9 and 15 December 2019, that is to say, approximately 10 months after 9 February 2019, the date on which the assessment of distinctive character was to take place. It is true that that 10-month period is not excessively long. However, it is apparent from the development of the sales figures submitted by the applicant that those figures increased considerably between 2012 and 2019. If, as the applicant submits, sales of toothpastes under the earlier mark have increased by 73.99% during the seven years prior to the interviews conducted as part of the survey, it can be inferred from this that, with the increase in sales figures, public recognition of the earlier mark has also increased during those seven years. In view of this rapid development, the effect of a 10-month period between the relevant date and the date of the survey is that the results do not allow sufficiently reliable conclusions to be drawn on the situation as it was on the relevant date.

77 Moreover, the probative value of opinion surveys may, inter alia, depend on the way in which the questions are formulated (see judgment of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 41 and the case-law cited). Thus, in the present case, the probative value of the opinion survey is weakened by the fact that the interviewees did not answer spontaneously, since the questionnaire used showed them the sign at issue and indicated the goods covered by the earlier mark.

78 It should be noted, as EUIPO did, that, unlike the present case, in the case which gave rise to the judgment of 21 April 2005, Ampafrance v OHIM – Johnson & Johnson (monBeBé) (T‑164/03, EU:T:2005:140, paragraph 80), to which the applicant refers, the results of the survey showed that the mark in question in that case was recognised by a significant section of the public. In the present case, the degree of knowledge indicated in the opinion survey amounts to 38.6%. That group of people had either replied that they had heard or seen the word ‘ajona’ in connection with toothpastes without, however, having been required to associate it with a specific commercial origin or a specific product, or even to recognise it as a trade mark, or, as the Board of Appeal correctly found in paragraph 69 of the contested decision, chose the rather vague response ‘seems familiar to me’. However, that percentage does not represent the part of the relevant public which associates the earlier mark with a single undertaking, even of unknown name. It is apparent from the survey carried out in December 2019, contained in the expert opinion of 15 January 2020, submitted by the applicant before the Board of Appeal, that that part is only 16.8%, so that the degree of distinctiveness resulting from the survey is in fact low, as the Board of Appeal found. The percentage of persons capable of establishing a link between the earlier mark and the applicant is not clear from the survey, which merely states, on page 7, that 7.7% of the participants associated the name ‘ajona’ either with the mark AJONA or with the applicant, or with the word ‘stomaticum’.

79 In the second place, the applicant’s argument that the Board of Appeal clearly applied an incorrect threshold by requiring that a certain degree of distinctiveness be achieved can also not succeed. That argument is based on a misreading of the contested decision from which it is in no way apparent that the Board of Appeal applied a precise threshold for the purpose of assessing whether there was any enhanced distinctiveness acquired through use. As EUIPO correctly observes, the Board of Appeal, in paragraphs 69 to 74 of the contested decision, assessed the evidence submitted by the applicant.

80 In the third place, in so far as the applicant argues that the earlier mark occupies twelfth position in the chart relating to preferred toothpastes in Germany in 2019, representing, as a percentage, ‘toothpastes used by Germans during the last four weeks’, first, the chart does not indicate which four-week period of 2019 is targeted and, secondly, the percentage of 2.8% in respect of the AJONA trade mark cannot be regarded as significant. The same applies to the market share of 1.88% in 2018, indicated by the diagram submitted by the applicant as Annex 3 to its appeal before the Board of Appeal.

81 As regards the applicant’s argument that the market for toothpaste is a very diversified market with hundreds of products, account must be taken of the fact that the applicant refers in that regard to the test set out in Annex 6 to its appeal before the Board of Appeal. According to the first page of that test, 396 toothpastes were tested, which does not mean that there were also 396 different marks. On the contrary, it is apparent from page 6 of that test that several products bearing the same mark, but meeting different needs, were tested.

82 In the fourth place, as regards the statement of the applicant’s managing director containing a table seeking to show that the sales figures increased between 2012 and 2019, it must be held, as observed by EUIPO, that that statement consists of a simple table without additional explanations which does not provide any information on the absolute sales figures, with the result that it has only limited relevance.

83 Consequently, the Board of Appeal did not err in finding that the earlier mark did not have enhanced distinctiveness acquired through use. Although, in paragraph 76 of the contested decision, the Board of Appeal classified the degree of inherent distinctiveness as ‘normal’, it should be understood that it correctly found the existence of an average degree of inherent distinctiveness of that mark (see, to that effect, judgment of 8 March 2023, Société des produits Nestlé v EUIPO – The a2 Milk Company (A2), T‑759/21, not published, EU:T:2023:108, paragraph 45).

The fourth part, alleging an incorrect assessment of the likelihood of confusion

85 The applicant submits, in essence, that there is a likelihood of confusion between the signs at issue as regards the goods in question.

86 The applicant claims in particular that the Board of Appeal’s finding that the visual comparison is predominant given the way of marketing is inconsistent and incorrect. According to the applicant, there exists no general rule that, for certain categories of goods, one aspect is always more important than the other. On the contrary, the circumstances must be taken into account on a case-by-case basis. Given that the goods in question are sold in pharmacies and drugstores, they are mainly purchased on demand, with the result that the phonetic perception of the marks regularly precedes purchase. Purchase discussions and the choice of product are made mainly on the basis of its name. As a result, the phonetic similarity of the marks is at least as significant as the visual similarity.

88 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).

89 In the present case, in the first place, the Board of Appeal found, in paragraphs 21 to 25 of the contested decision, that the goods in question were aimed at the general public of the European Union with an average level of attention. There is no need to call into question those assessments, which are not disputed by the applicant.

90 In the second place, it is apparent from paragraph 40 above that the goods covered by the signs at issue referred to in paragraph 20 above were similar only to a low degree. In addition, it has been noted in paragraph 32 above that the goods referred to in paragraph 19 above had to be regarded as being different.

91 In the third place, the signs at issue display a low degree of visual similarity (see paragraph 53 above) and an average to high degree of phonetic similarity (see paragraph 63 above). Furthermore, the Board of Appeal was fully entitled to observe that it was impossible to carry out a conceptual comparison of the signs at issue (see paragraph 43 above).

92 In the fourth place, it has been held in paragraph 83 above that the earlier mark displayed an average degree of distinctiveness.

93 In the fifth place, it is settled case-law that, in the global assessment of the likelihood of confusion, the respective weight to be given to the visual, phonetic or conceptual aspects of the signs at issue may vary according to the objective circumstances in which the marks may be present on the market. However, in that context, the circumstances in which it is usual to expect the category of goods covered by the marks at issue to be marketed must be taken as a benchmark (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 57 and the case-law cited).

94 If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (see judgments of 30 March 2022, L’Oréal v EUIPO – Debonair Trading Internacional (SO COUTURE), T‑30/21, not published, EU:T:2022:190, paragraph 74 and the case-law cited, and of 14 December 2022, Nemport Liman İşletmeleri Ve Özel Antrepo Nakliye Ticaret v EUIPO – Newport Europe (NEMPORT LİMAN İŞLETMELERİ), T‑18/22, not published, EU:T:2022:815, paragraph 62 and the case-law cited).

95 The goods used for body care and beauty are generally purchased on a self-service basis and the relevant public will have the opportunity to inspect the goods visually (see, to that effect, judgments of 8 July 2009, Procter & Gamble v OHIM – Laboratorios Alcala Farma (oli), T‑240/08, not published, EU:T:2009:258, paragraph 39; of 13 September 2010, P&G PRESTIGE BEAUTE, T‑366/07, not published, EU:T:2010:394, paragraph 84; and of 30 March 2022, SO COUTURE, T‑30/21, not published, EU:T:2022:190, paragraph 75). In general, neither dentifrices nor the goods covered by the sign applied for are sold in specialist shops, but the majority of consumers obtain those goods from supermarkets and drugstores. Supermarkets and drugstores operate on a self-service basis, even if they employ staff to help customers in their choice. Therefore, although oral communication on the goods concerned and on the marks is not excluded, the visual perception of the signs at issue will generally take place prior to purchase. As the intervener correctly observes, the purchase will be made almost without interaction with any business personnel, since the consumer must visually seek out the goods.

96 Even if pharmacies could constitute marketing channels for the goods in question, it must be observed that, in pharmacies, an oral order is regularly required only for medicinal products, in particular those subject to prescription. However, the present case concerns over-the-counter goods which are generally offered on self-service displays, even in pharmacies. The goods are chosen there by customers and are only taken to the till subsequently. Even if it is conceivable that in some cases the goods in question may also be sold in response to an oral order or that the selection of goods may be accompanied by a process of communication with the seller, that method cannot be regarded as the usual method of marketing those goods. The same is true for specialist shops (see, by analogy, judgment of 3 March 2004, Mülhens v OHIM – Zirh International (ZIRH), T‑355/02, EU:T:2004:62, paragraph 54). Thus, in most cases, the phonetic perception of the marks will not precede purchase. In addition, it must be taken into consideration that oral communication will take place, where necessary, with qualified sales personnel who are capable of informing customers about the various brands (see, to that effect, judgment of 23 January 2008, Demp v OHIM – Bau How (BAU HOW), T‑106/06, not published, EU:T:2008:14, paragraph 46).

97 It follows that, as EUIPO correctly observes, although the phonetic similarity of the signs plays a not insignificant role and cannot be completely disregarded, its impact is limited. Consequently, the Board of Appeal was right to point out the importance of the visual similarity in the comparison of the signs at issue. As the Board of Appeal found in paragraph 78 of the contested decision, the average to high degree of phonetic similarity of the signs at issue and the average distinctiveness of the earlier mark are insufficient to offset the low degree of visual similarity and create a likelihood of confusion.

98 In the light of the considerations set out in paragraphs 89 to 97 above and having regard to the principle of interdependence referred to in paragraph 88 above, it must be held that the Board of Appeal did not err in finding, in paragraphs 79 and 80 of the contested decision, that there was no likelihood of confusion on the part of the relevant public.

100 In the light of all the foregoing considerations, the single plea in law relied on by the applicant in support of its form of order must be rejected.

The applicant’s claim for the opposition to be upheld in its entirety and for the international registration designating the European Union to be rejected

101 In so far as the applicant’s second head of claim must be understood as requesting the Court to alter the contested decision, it must be borne in mind that the review carried out by the Court under Article 72(3) of Regulation 2017/1001 is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 72(2) of Regulation 2017/1001 (see judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited).

102 Since the single plea in law relied on by the applicant in support of its claim for annulment must be rejected, as has been found in paragraph 100 above, the contested decision is not vitiated by any of the illegalities referred to in Article 72(3) of Regulation 2017/1001, with the result that the second head of claim must be rejected.

103 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. 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.

104 Furthermore, the intervener has claimed that the applicant should be ordered to pay the costs incurred in the proceedings before the Board of Appeal of EUIPO. Since the present judgment dismisses the action brought against the contested decision, point 4 of the operative part of that decision continues to govern the costs incurred in the appeal proceedings before EUIPO (see judgment of 9 November 2022, CB v EUIPO – China Construction Bank (CCB), T‑639/21, not published, EU:T:2022:698, paragraph 126 and the case-law cited).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Dr. Rudolf Liebe Nachfolger v EUIPO - Bit Beauty (ayuna LESS IS BEAUTY) (EU trade mark - Judgment) [2023] EUECJ T-490/22 (11 October 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T49022.html Cite as: ECLI:EU:T:2023:616, [2023] EUECJ T-490/22, EU:T:2023:616

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