Alves Casas v EUIPO - Make-Up Art Cosmetics (mccosmetics NY) (EU trade mark - Judgment) [2023] EUECJ T-681/21 (26 April 2023)

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(EU trade mark – Opposition proceedings – Application for EU figurative mark mccosmetics NY – Earlier EU figurative mark MAC MAKE-UP ART COSMETICS – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Damage to reputation – Article 8(5) of Regulation 2017/1001)

Ana Maria Alves Casas, residing in Porto (Portugal), represented by M.A. Martins, lawyer,

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

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

Make-Up Art Cosmetics, Inc., established in New York, New York (United States), represented by I. Fowler, B. Worbes and I. Junkar, lawyers,

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

1 By her action under Article 263 TFEU, the applicant, Ms Ana Maria Alves Casas, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 August 2021 (Case R 2398/2020‑2) (‘the contested decision’).

2 On 28 February 2018, the applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative mark:

3 The mark applied for covered goods in Classes 3, 5 and 10 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:

– Class 3: ‘Non-medicated cosmetics and toiletry preparations; Non-medicated dentifrices; Perfumery products, ethereal oils; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations’;

– Class 5: ‘Pharmaceuticals; Medical and veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Baby food; Food supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin, Fungicides, Herbicides’;

– Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments; Artificial limbs, eyes and teeth; Orthopaedic articles; Suture materials; Therapeutic and assistance devices for disabled people; Massage apparatus; Apparatus, devices and articles for childcare’.

4 On 19 June 2018, the intervener, Make-Up Art Cosmetics, Inc., filed a notice of opposition pursuant to Article 46 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) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

5 The opposition was based, inter alia, on the EU figurative mark reproduced below, registered on 5 July 2013 under No 11607132:

6 The earlier mark was registered, inter alia, for goods in Class 3 corresponding to the following description: ‘Cosmetics, skincare preparations, toiletries, essential oils, hair care preparations and perfumery; soaps’.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.

8 On 23 October 2020, the Opposition Division upheld the opposition in its entirety on the basis of Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.

9 On 16 December 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, solely in relation to the goods in Classes 5 and 10.

10 By the contested decision, the Board of Appeal dismissed the appeal. It held, in essence, that the marks were visually and phonetically similar to at least a low degree and conceptually similar to an average degree, which, on account of the strong enhanced degree of distinctiveness and the strong reputation of the earlier mark for ‘cosmetics’, was sufficient to give rise to a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with the mark applied for in respect of ‘pharmaceuticals; medical and veterinary preparations; sanitary preparations for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; food supplements for human beings and animals; plasters, materials for dressings; disinfectants; preparations for destroying vermin, fungicides’ in Class 5. Furthermore, the Board of Appeal took the view that a link, for the purposes of Article 8(5) of Regulation 2017/1001, would be established in the mind of the relevant public for all the other goods concerned in Classes 5 and 10. That link would give the applicant a commercial advantage and would be detrimental to the repute of the earlier mark.

13 In support of her action, the applicant raises, in essence, three pleas, alleging infringement of, first, Article 47(2) and (3) of Regulation 2017/1001, secondly, Article 8(1)(b) of that regulation and, thirdly, Article 8(5) of that regulation.

14 EUIPO and the intervener contend that Annexes A.2, A.3 and A.4 to the application are inadmissible. They submit that they were created after the contested decision, were submitted for the first time before the Court and are therefore inadmissible.

15 It should be noted, as EUIPO and the intervener maintain, that those annexes to the application were produced for the first time before the Court, which was not disputed by the applicant at the hearing. They contain a list of the applicant’s product specifications, a catalogue of the applicant’s goods and two videos in MP4 format, available on YouTube, indicating the phonetics of the conflicting marks.

16 The purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).

17 Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).

18 The abovementioned documents must therefore be excluded, without it being necessary to assess their probative value.

Admissibility of the first plea in the light of the requirements of Article 177(1)(d) of the Rules of Procedure

19 The intervener submits that the first plea is inadmissible pursuant to Article 177(1)(d) of the Rules of Procedure, in so far as it does not meet the requirements incumbent on the applicant to identify, clearly and precisely, the reasons why the Board of Appeal infringed Article 47(2) and (3) of Regulation 2017/1001, which relates to the examination of the opposition.

20 According to Article 177(1)(d) of the Rules of Procedure, an application must state, inter alia, the subject matter of the proceedings, the pleas in law and the arguments relied on. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if appropriate, without other information in support. In order to ensure legal certainty and the sound administration of justice, if an action or, more specifically, a plea in law is to be admissible, the essential facts and law on which the action is based must be apparent from the text of the application itself, even if only stated briefly, provided that the statement is coherent and comprehensible (see, to that effect and by analogy, order of 25 May 2016, Stagecoach Group v EUIPO (MEGABUS.COM), T‑805/14, not published, EU:T:2016:336, paragraphs 16 and 17 and the case-law cited).

21 In the present case, it should be noted that, in her first plea, the applicant confined herself, in paragraph 1 of the application and in the form of order sought therein, to referring, without further explanation, to an infringement of Article 47(2) and (3) of Regulation 2017/1001.

22 It must therefore be noted, as observed by the intervener, that the applicant has not raised any argument that would make it possible to state clearly the subject matter of this plea and, consequently, this plea must be rejected as inadmissible.

The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

23 As provided in Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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.

24 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).

25 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).

26 First, the Board of Appeal found that, as regards the goods in Class 5, the relevant public consisted of the public at large, but also a professional public with specific professional knowledge or expertise. It also held that, in the medical field, the degree of attention of both the professional public and the public at large was high. Secondly, the Board of Appeal found, as regards the goods in Class 10, that, on the one hand, ‘surgical apparatus and instruments’ were aimed at healthcare professionals with a high level of attention and that, on the other hand, the rest of the goods in that class could also be purchased by the public at large, displaying more than an average level of attention. The Board of Appeal held that the relevant territory is the entire European Union.

28 In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

29 In the present case, the Board of Appeal held in paragraphs 27 to 34 of the contested decision that ‘pharmaceuticals’ in Class 5 were similar to an average degree to the goods covered by the earlier mark and that ‘medical and veterinary preparations; foodstuffs and dietetic substances for medical or veterinary purposes; food supplements for human beings and animals; disinfectants; preparations for destroying vermin, fungicides’ in Class 5 were similar to the goods covered by the earlier mark, without, however, specifying the degree of similarity. It also found that ‘sanitary preparations for medical purposes; plasters, materials for dressings’ in Class 5 were similar to a low degree to the goods covered by the earlier mark.

30 First of all, the applicant submits, as was clarified at the hearing, that the Board of Appeal erred in its assessment of the similarity of the goods in Class 5 with those in Class 3 in that it failed to take into account the fact that the goods that it compared differed in terms of their purpose and method of use. In particular, she claims that, on account of the differences in composition, purpose and methods of use, there is no competition or complementarity between the goods at issue. Next, she submits that the distinction between distribution channels is particularly relevant and is, in itself, sufficient to distinguish between the goods under the marks at issue. Last, she disputes the similarity between ‘surgical apparatus and instruments’ in Class 10 and the goods covered by the earlier mark.

32 In that regard, first, it should be noted that, according to the case-law, some of the goods in Class 3 and in Class 5 may share the same purpose, be sold through the same distribution channels, such as pharmacies or other specialised shops, and are often manufactured by the same companies. Similarly, those goods are often intended for the same end users (judgments of 13 May 2015, Harper Hygienics v OHIM – Clinique Laboratories (CLEANIC intimate), T‑363/13, not published, EU:T:2015:276, paragraph 41, and of 13 May 2015, Harper Hygienics v OHIM – Clinique Laboratories (CLEANIC natural beauty), T‑363/12, not published, EU:T:2015:278, paragraph 42). That is the case for ‘pharmaceuticals’ in Class 5, which, as the Board of Appeal found in paragraph 27 of the contested decision, are similar to an average degree to ‘cosmetics, skincare preparations, hair care preparations, soaps’ in Class 3 covered by the earlier mark. The same is true of ‘medical and veterinary preparations’ and ‘disinfectants’ in Class 5 and ‘soaps’ in Class 3 covered by the earlier mark.

33 Secondly, as regards ‘foodstuffs and dietetic substances for medical or veterinary purposes; food supplements for human beings and animals’ covered by the mark applied for, the Board of Appeal rightly found that they could be used for body care, for instance skin, hair or nail care, and, in that respect, fulfil medical purposes. As the intervener rightly pointed out at the hearing, those goods may be purchased in pharmacies. Consequently, there is an average degree of similarity between those products and ‘toiletries’ covered by the earlier mark. As regards ‘preparations for destroying vermin’, as the Board of Appeal rightly pointed out, such goods may have the purpose of removing lice from hair and are, consequently, similar to an average degree to ‘hair care preparations’, covered by the earlier mark. The same is true of ‘fungicides’ in Class 5, which may include antifungal medication for feet and are therefore similar to ‘skincare preparations’ covered by the earlier mark.

34 Thirdly, there is a low degree of similarity between ‘sanitary preparations for medical purposes; plasters, materials for dressings’ in Class 5 and ‘soaps’ covered by the earlier mark in so far as they share the same distribution channels and target the same consumers, even if they are used for different purposes (see, by analogy, judgment of 13 May 2015, CLEANIC natural beauty, T‑363/12, not published, EU:T:2015:278, paragraph 44).

35 Fourthly, in so far as the applicant claims, in essence, that ‘surgical apparatus and instruments’ in Class 10 are not similar to the products covered by the earlier mark, suffice it to note that the Board of Appeal did not refuse registration of the mark applied for in respect of those ‘surgical apparatus and instruments’ on the basis of Article 8(1)(b) of Regulation 2017/1001.

36 In the light of those factors, it must be held that, first, ‘pharmaceuticals; medical and veterinary preparations; foodstuffs and dietetic substances for medical or veterinary purposes; food supplements for human beings and animals; disinfectants; preparations for destroying vermin, fungicides’ in Class 5 have an average degree of similarity with the goods covered by the earlier mark and, secondly, ‘sanitary preparations for medical purposes; plasters, materials for dressings’ in Class 5 have a low degree of similarity with the goods of the earlier mark.

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

38 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

39 The Board of Appeal found that, visually, the signs at issue coincided in the letters ‘m’ and ‘c’, which, moreover, form part of the most dominant and distinctive elements of the marks. The signs at issue also share the element ‘cosmetics’, which, however, has a different position in each of the signs at issue. Furthermore, the layout of the signs at issue is quite similar. However, the signs at issue differ in the second letter – ‘a’ – of the earlier mark, in the dots between the letters, which are not present in the mark applied for, and in the words ‘make-up’ and ‘art’ of the earlier mark versus the letters ‘n’ and ‘y’ of the mark applied for. The Board of Appeal inferred from this that those signs had a low degree of similarity. Phonetically, the Board of Appeal found that the pronunciation of the signs coincided in the sound of the word ‘mac’ and in that of the word ‘cosmetics’, if the latter were pronounced in the earlier mark. The pronunciation of those signs differed in the sound of the elements ‘make-up’ and ‘art’ of the earlier mark and ‘ny’ or ‘new york’ of the mark applied for. The Board of Appeal concluded that those signs were similar to a low degree. Conceptually, the Board of Appeal found that the signs at issue were similar to an average degree, taking into account the fact that the element ‘mac’ of the earlier mark and the first two letters ‘mc’ of the mark applied for would be perceived, by at least a substantial part of the relevant public, as a Gaelic surname prefix meaning ‘son of’.

40 The applicant disputes the Board of Appeal’s assessments and submits that the signs at issue are not similar. Visually, the signs at issue are not similar in the composition of letters, the font and the presence of a figurative element. Phonetically, the mark applied for, ‘mccosmetics’, is pronounced ‘em-si-kos-me-ti-ks’ whereas the earlier mark is pronounced ‘mak’. Conceptually, the word ‘cosmetics’ is a common name for the goods concerned, which cannot act as a means of identifying their origin and should therefore not be taken into consideration.

41 In the present case, the earlier mark is a figurative mark consisting of the letters ‘m’, ‘a’ and ‘c’, in a slightly stylised, bold typeface in upper-case letters with a dot between the letters ‘m’ and ‘a’ and between the letters ‘a’ and ‘c’. Underneath those letters, the words ‘make-up art cosmetics’ are depicted in a much smaller, fairly standard typeface, also in upper-case letters. The mark applied for is a figurative mark consisting of the letters ‘mccosmetics’, in a fairly standard bold typeface in lower-case letters with a horizontal line underneath and, at the end, the letters ‘n’ and ‘y’ depicted in a slightly smaller typeface in upper-case letters. The terms ‘mac’ and ‘mccosmetics’ are the dominant elements of the marks at issue, as was noted by the Board of Appeal.

42 As regards the visual comparison, it should be noted that the marks at issue share the common elements ‘mc’ and ‘cosmetics’. The marks at issue differ inasmuch as the second letter of the earlier mark is an ‘a’, the dots between the letters ‘m’, ‘a’ and ‘c’ are not present in the earlier mark, and the words ‘make-up’ and ‘art’ are found only in the earlier mark, just as the term ‘ny’ is found only in the mark applied for. The graphic representation of the signs at issue is also different, since different fonts are used.

44 As regards the phonetic comparison, it should be noted, as the Board of Appeal did, that a substantial part of English-speaking consumers will pronounce the word ‘mc’, which appears in the mark applied for, as ‘mac’, which coincides with the word ‘mac’ of the earlier mark. The signs at issue also coincide in the pronunciation of the word ‘cosmetics’, assuming that it will be pronounced given its lower position in the earlier mark. However, as was correctly noted in the contested decision, those signs differ in the pronunciation of the elements ‘make-up’ and ‘art’ of the earlier mark and the element ‘ny’ or ‘new york’ of the mark applied for, depending on whether those words will be pronounced or not, on account of their size, position and non-distinctive character.

45 In the light of the foregoing considerations, it must be held that the degree of phonetic similarity of the signs at issue is low.

46 As regards the conceptual comparison of the signs, it must be stated that the applicant merely makes a general assertion that the word ‘cosmetics’ has only a limited impact because of its non-distinctive character, which was also pointed out by the Board of Appeal. It must therefore be held that the Board of Appeal was right to conclude that the words ‘mac’ and ‘mc’ would be perceived by at least a substantial part of English-speaking consumers as a concept referring to a Gaelic surname and, consequently, that the signs were similar to an average degree.

47 As is apparent from recital 11 of Regulation 2017/1001, the appreciation of the likelihood of confusion depends on numerous elements, 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). In the present case, the Board of Appeal found that the earlier mark had a strong degree of distinctiveness and a high degree of reputation, at least for ‘cosmetics’, and an average degree of distinctiveness for the rest of the goods.

48 The applicant submits that the reputation acquired by the form of the mark does not extend to the versions of the registered mark.

49 In that regard, it should be borne in mind that, according to the case-law, the proprietor of a registered mark may, in order to establish the reputation of that mark, rely on evidence of its reputation under a different form, in particular under the form of another registered mark, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking (judgment of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 76).

50 Consequently, the Board of Appeal was right to conclude that the earlier mark had a strong distinctiveness and a high degree of reputation, at least for ‘cosmetics’.

51 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).

52 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).

53 In the present case, first, the Board of Appeal found that there was no likelihood of confusion for the goods ‘baby food; material for stopping teeth, dental wax; herbicides’ in Class 5 and ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistance devices for disabled people; massage apparatus; apparatus, devices and articles for childcare’ in Class 10, since they were considered dissimilar to the goods of the earlier mark.

54 Secondly, the Board of Appeal found that there was a likelihood of confusion for ‘pharmaceuticals; medical and veterinary preparations; sanitary preparations for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; food supplements for human beings and animals; plasters, material for dressings; disinfectants; preparations for destroying vermin, fungicides’ in Class 5, having regard, in particular, to the low degree of visual and phonetic similarity and the average degree of conceptual similarity of the signs at issue, the low to average similarity of the goods covered by the mark applied for with those covered by the earlier mark and the strong distinctiveness of the earlier mark for ‘cosmetics’.

55 The applicant submits that there is no similarity or identity between the signs at issue capable of giving rise to a likelihood of confusion.

56 At the outset, it was established that the Board of Appeal had rightly concluded, first, that there was a low degree of visual and phonetic similarity and an average degree of conceptual similarity between the signs at issue and, secondly, that there was a low to average degree of similarity between the goods mentioned in paragraph 54 above and the goods covered by the earlier mark. Furthermore, the level of attention of the relevant public is high and the earlier mark had a strong degree of distinctiveness and a high degree of reputation for ‘cosmetics’.

57 In those circumstances, it must be held that the Board of Appeal rightly found that the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was established in the present case concerning the products mentioned in paragraph 54 above.

58 It follows that the second plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected as unfounded.

The third plea, alleging infringement of Article 8(5) of Regulation 2017/1001

59 Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services in respect of which it is applied for are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

60 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark, which is claimed to have a reputation, must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited; see also, to that effect, judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35).

61 In the present case, the Board of Appeal found that the earlier mark enjoyed a high degree of reputation for ‘cosmetics’ in the European Union. In addition, it found that there was a certain link between ‘baby food; material for stopping teeth, dental wax; herbicides’ in Class 5 and ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistance devices for disabled people; massage apparatus; apparatus, devices and articles for childcare’ in Class 10 and ‘cosmetics’ of the earlier mark, since they could be regarded as belonging to the same market sectors or to related market sectors. Next, the Board of Appeal noted that that link between the signs at issue would produce a commercial benefit for the applicant and that the use of the mark applied for could lead to free-riding. Furthermore, the Board of Appeal held that it is highly probably that the association of the earlier mark with ‘herbicides’ in Class 5 would have a negative influence on the perception of the earlier mark. It concluded that the conditions of Article 8(5) of Regulation 2017/1001 were fulfilled for the abovementioned goods.

62 The applicant complains that the Board of Appeal did not correctly assess the similarity between the signs, the particularities of the goods or the relevant public. Moreover, she submits that the Board of Appeal failed to establish the reputation of the earlier mark as a whole. It merely established the reputation of the element ‘mac’. That reputation exists in respect of ‘cosmetics’, but has not been demonstrated for the rest of the goods in Class 3. Last, the applicant concludes that there is no risk of detriment or unfair advantage since there is neither a similarity nor a link between the signs for the relevant public.

64 In the first place, as regards the link between the signs at issue, it should be borne in mind that the existence of that link must, like the existence of a likelihood of confusion, be assessed globally, account being taken of all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue, the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 56, and of 10 October 2019, McDreams Hotel v EUIPO – McDonald’s International Property (mc dreams hotels Träumen zum kleinen Preis!), T‑428/18, not published, EU:T:2019:738, paragraph 30).

65 In the present case, it must be held that, as is apparent from paragraphs 37 to 50 above, the reputation of the earlier mark has been proved as regards ‘cosmetics’ and the existence of a low degree of visual and phonetic similarity and an average degree of conceptual similarity of the signs at issue have been demonstrated.

66 As regards the applicant’s argument that the Board of Appeal did not take into account the specific features of the goods at issue and their differences, it should be noted, as the Board of Appeal did, that the similarity of the goods is only one factor among others for the purposes of establishing a link, but not a condition for the application of Article 8(5) of Regulation 2017/1001. Furthermore, the very wording of that article explicitly states that it applies to conflicts between marks covering different goods and services.

67 Moreover, the Board of Appeal rightly concluded that there was a certain link between the contested goods ‘baby food’ in Class 5 and ‘orthopaedic articles; apparatus, devices and articles for childcare’ in Class 10, on the one hand, and ‘cosmetics’ of the earlier mark, on the other, in so far as the relevant public can often find such goods in drugstores or pharmacies.

68 So far as concerns ‘herbicides’, those goods destroy microorganisms, which creates a certain link with ‘soaps’ of the earlier mark.

69 Furthermore, there also exists a link between ‘massage apparatus’ and ‘cosmetics’, since those goods are used for beautification services in dedicated facilities and are offered for sale in the same large department stores. The same is true as regards ‘material for stopping teeth, dental wax’ in Class 5 and ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; suture materials; therapeutic and assistance devices for disabled people’ in Class 10, in so far as those goods relate to beautification, well-being and care of the body, as was correctly pointed out in paragraph 78 and 79 of the contested decision. At the hearing, it was also confirmed by EUIPO and the intervener that those goods concerned the appearance of the body and were, in that sense, linked to ‘cosmetics’.

70 The applicant’s argument that the Board of Appeal incorrectly found that the relevant public for the goods at issue coincided cannot succeed. In that regard, it is apparent from paragraph 81 of the contested decision that the Board of Appeal held that the relevant public overlapped only in respect of some of the goods. As is apparent from the case-law, even if the sections of the public targeted by the marks at issue do not overlap completely, a connection between the marks can be established (see, to that effect, judgment of 26 September 2012, IG Communications v OHIM – Citigroup and Citibank (CITIGATE), T‑301/09, not published, EU:T:2012:473, paragraph 108 and the case-law cited).

71 It follows from the foregoing that the applicant’s arguments relating to the Board of Appeal’s assessment of the link between the marks are unfounded.

72 In the second place, as regards the applicant’s argument that the risk of detriment or unfair advantage does not exist, in so far as the conditions referred to in Article 8(5) of Regulation 2017/1001 and in particular the similarity between the signs at issue and the link for the relevant public, are not satisfied, it should be noted that that challenge by the applicant is based solely on the similarity of those signs and the existence of that link. Those arguments have already been rejected as unfounded in paragraphs 37 to 46 and 64 to 69 above.

73 Consequently, the Board of Appeal’s assessment in paragraphs 63 to 108 of the contested decision is the result of a correct application of the conditions under Article 8(5) of Regulation 2017/1001 and it therefore rightly found that those conditions were satisfied for ‘baby food; material for stopping teeth, dental wax; herbicides’ in Class 5 and ‘surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistance devices for disabled people; massage apparatus; apparatus, devices and articles for childcare’ in Class 10.

74 It follows from the foregoing that the third plea, alleging infringement of Article 8(5) of Regulation 2017/1001, must be rejected and, consequently, the action must be dismissed in its entirety.

75 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.

76 Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Alves Casas v EUIPO - Make-Up Art Cosmetics (mccosmetics NY) (EU trade mark - Judgment) [2023] EUECJ T-681/21 (26 April 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T68121.html Cite as: EU:T:2023:215, [2023] EUECJ T-681/21, ECLI:EU:T:2023:215

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