JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

28 April 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark VICHY LABORATOIRES V IDÉALIA — Earlier EU word mark IDEALINA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑144/15,

L’Oréal, SA, established in Paris (France), represented by J. Sena Mioludo, avocat,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,

respondent,

the other party to the proceedings before the Board of Appeal of EUIPO being

Theralab — Produtos Farmacêuticos e Nutracêuticos, Lda, established in Viseu (Portugal),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 22 January 2015 (Case R 1097/2014-4), relating to opposition proceedings between Theralab — Produtos Farmacêuticos e Nutracêuticos and L’Oréal,

THE GENERAL COURT (Eighth Chamber),

composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 25 March 2015,

having regard to the response lodged at the Court Registry on 29 June 2015,

having regard to the fact that no application for a hearing was submitted by the main parties within the period of three weeks from notification of closure of the written part of the procedure, and having therefore decided to rule on the action without an oral part of the procedure pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 26 July 2012, the applicant, L’Oréal, SA, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought fall within Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Perfumes, eau de cologne; gels, salts for the bath and the shower, not for medical purposes; soaps, deodorants for personal use; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning compounds (cosmetics); make-up preparations; shampoos; gels, sprays, mousses and balms for hair styling and hair care; hair lacquers; hair colouring and decolourising preparations; hair waving and curling preparations; essential oils for personal use’.

4        On 25 February 2013, Theralab — Produtos Farmacêuticos e Nutracêuticos, Lda, filed a notice of opposition pursuant to Article 41 and Article 8(1)(a) and (b) of Regulation No 207/2009 to the registration of the mark applied for.

5        The opposition was aimed at all the goods covered by the mark applied for and was based on the earlier EU word mark IDEALINA, registered on 9 June 2011, designating goods which fall within Class 3 and correspond to the following description: ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumes, essential oils, cosmetics, hair lotions; dentifrices’.

6        By decision of 26 February 2014, the Opposition Division found that there was a likelihood of confusion and granted the opposition in its entirety on the basis of Article 8(1)(b) of Regulation No 207/2009.

7        On 23 April 2014 the applicant lodged an appeal with EUIPO, under Articles 58 to 60 of Regulation No 207/2009, against the decision of the Opposition Division.

8        By decision of 22 January 2015 (‘the contested decision’), the Board of Appeal dismissed the appeal. In particular, the Board of Appeal held, first of all, that the goods covered by the mark applied for were identical to the goods covered by the earlier mark. The Board of Appeal then found that the words ‘vichy’ and ‘idéalia’ were dominant elements within the mark applied for, with the former, however, having descriptive connotations, as did the word ‘laboratoires’. In addition, the words ‘idéalia’ and ‘idealina’ had average distinctive character. In this context, the high degree of visual similarity characterising those words created, at the very least, a weak degree of visual similarity between the marks at issue. The opposing signs had a high degree of phonetic similarity since, faced with the mark applied for, a member of the relevant public would pronounce only the word ‘idéalia’ or, even if this were not the case, an average degree of phonetic similarity taking into account the proximity between the words ‘idéalia’ and ‘idealina’. Finally, the Board of Appeal concluded that there was a likelihood of confusion taking into account the average distinctive character of the earlier mark, the visual and phonetic similarity between the marks at issue and the identity of the goods covered by these marks.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision and the decision of the Opposition Division;

–        reject the opposition;

–        accept the application for registration of the mark applied for in its entirety;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. This plea is divided into two parts:

12      In the first part, the applicant claims that, in assessing the likelihood of confusion, the Board of Appeal only took into account the single word ‘idéalia’ of the mark applied for and ignored the word ‘vichy’ for the purposes of comparison with the earlier mark. Far from being a descriptive element, that word is a dominant element of the mark applied for, in the same way as the word ‘idéalia’, which also has one less letter than the word ‘idealina’. By contrast, taking into account all the elements of the mark applied for, the Board of Appeal should have concluded that there was a weak degree of similarity between the opposing signs. Furthermore, the Board of Appeal misinterpreted, first, the principle that a consumer tends to be more drawn towards the beginning of a mark and, secondly, the fact that phonetic similarity plays a limited role due to the way in which the goods covered by the marks at issue are marketed.

13      In the second part, the applicant claims that the earlier mark has weak distinctive character with respect to cosmetic goods, so that any likelihood of confusion should be excluded in the present case. In fact, at least two other marks which allude to the concept of the ‘idea’ or ‘ideal’ have been present for a long time in this sector, so that the earlier mark is of limited originality. The proprietor of the earlier mark cannot require operators seeking to register a mark to keep a greater distance from the earlier mark than that which the proprietor kept in relation to earlier marks than his own.

14      EUIPO disputes the admissibility of the second and third heads of the form of order sought by the applicant as well as the merits of the action.

15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

16      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, and paragraphs 30 to 33 of the case-law cited).

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

18      The assessment of similarity between two marks cannot be limited to taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not exclude the possibility that the overall impression conveyed to the relevant public by a composite mark may, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible in the overall impression conveyed by it that the assessment of similarity can be carried out solely on the basis of the dominant element (judgment of 19 March 2015, MEGA Brands International v OHIM, C‑182/14 P, ECR, EU:C:2015:187, paragraphs 32 and 38).

19      In the present case, the argument put forward by the applicant in support of the first part of the single plea in law, according to which the Board of Appeal ignored the elements which compose the mark applied for, other than the word ‘idéalia’, is based on a misreading of the contested decision.

20      In particular, as is clear from paragraphs 14 to 18 of that decision, the Board of Appeal did carry out an assessment of the various elements which compose the mark applied for. Furthermore, the Board of Appeal found that, because of their stronger distinctive character in respect of the figurative elements of the mark, the word elements of the mark applied for draw more attention from the consumer and that the words ‘idéalia’ and ‘idealina’ have average distinctive character in respect of the goods concerned. Moreover, the paleness and the limited contrast of the letter ‘v’, on the one hand, and the small and pale font of the word ‘laboratoires’, on the other hand, make the words ‘vichy’ and ‘idéalia’ dominant elements of the mark applied for. In addition, the word ‘vichy’ has geographical connotations, while the word ‘laboratoires’ in itself has descriptive character relating to a place of production, which weakens the distinctive character of the word ‘vichy’ to the extent that it alludes to a production from a laboratory in Vichy (France). The Board of Appeal also expressly rejected the argument that the element ‘idéalia’ was negligible in the presence of the word ‘vichy’.

21      In this context, taking into account the word and figurative elements of the mark applied for which distinguish it from the earlier mark and the high degree of visual similarity between the words ‘idéalia’ and ‘idealina’, the Board of Appeal held that there was at least a weak degree of visual similarity between the marks at issue (paragraph 19 of the contested decision). Concerning the phonetic comparison, the Board of Appeal found a high degree of similarity in the case where the relevant public limits itself to pronouncing the word ‘idéalia’ within the mark applied for, or an average degree of similarity in the case where the mark at issue is pronounced in its entirety (paragraph 20 of the contested decision). Finally, the Board of Appeal held that a meaningful conceptual comparison of the two signs was not possible (paragraph 21 of the contested decision).

22      It follows from the foregoing that, contrary to the claim of the applicant, the Board of Appeal did not limit itself to a comparison of the word ‘idéalia’, on the one hand, and the word ‘idealina’, on the other hand, by disregarding the other elements which compose the mark applied for. On the contrary, as pointed out by EUIPO, the Board of Appeal reasoned its decision by reference to all the elements which compose the mark, including the word ‘vichy’, whose position within the mark applied for was equally taken into account.

23      Furthermore, the applicant’s argument that many marks contain geographical references does not invalidate the assessment of the Board of Appeal concerning the role of the word ‘vichy’ within the mark applied for. In fact, first, as is clear from paragraph 16 of the contested decision, the Board of Appeal found that the words ‘vichy’ and ‘idéalia’ are dominant elements within the mark applied for. According to the same paragraph of the contested decision, the position of the word ‘idéalia’ is emphasised by the fact that the ‘v’ element points in its direction. At paragraph 34 of the application, the applicant comes to the same conclusion concerning the dominant character of the words ‘vichy’ and ‘idéalia’ within the mark applied for, so that the claim, in support of which examples of marks allegedly having geographical references were put forward, is not clear. Secondly, if the applicant’s argument is that a geographical reference cannot automatically be found to be negligible, then it is based on a mistaken premiss since, as already stated, the Board of Appeal did not find that the word ‘vichy’ was negligible on the mark applied for. As pointed out by EUIPO, if that had been the case, the Board of Appeal would have found a high degree of similarity between the opposing signs, which has not been the case.

24      Moreover, concerning the argument that, unlike the word ‘idealina’, the word ‘idéalia’ does not feature the letter ‘n’, it is sufficient to state that the Board of Appeal took this circumstance into account at paragraph 19 of the contested decision, in which it was fully entitled to find that there was at least a weak degree of visual similarity between the opposing signs.

25      The applicant’s arguments in support of the second part of the single plea in law are likewise unconvincing.

26      In fact, the circumstance that two marks, namely the mark IDEAL LINE and the mark IDEALIST, are registered for cosmetic goods is not sufficient to call into question the assessment of the Board of Appeal by which, taking into account the fact that it is not descriptive and has no conceptual content, the mark IDEALINA has average distinctive character in respect of the goods for which it is registered.

27      In particular, first, the two marks put forward by the applicant have a clear conceptual content, at least for the English-speaking public, in so far as they allude, by including the words ‘ideal’ and ‘idealist’ as they are, to the notions of ideal and idealism respectively. However, as EUIPO contends, although the earlier mark includes the group of letters ‘ideal’, this group is not separated from the group of letters ‘ina’, which, taking into account the fact that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, conceptually distinguishes it from the marks put forward by the applicant. Secondly, the applicant’s approach involves a conceptual similarity between the opposing marks, which reinforces the similarity between those marks and, as a result, the likelihood of confusion found to exist by the Board of Appeal. Thirdly, the registration of two marks is not sufficient to prove such a common effective use of the words ‘idea’ or ‘ideal’ in the cosmetic goods sector that the average consumer would perceive them as banal and habitual and, as a consequence, weakly distinctive.

28      Moreover, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services covered (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 62 and the case-law cited).

29      In this regard it must be noted that, as stated by EUIPO, the applicant does not dispute the findings of the Board of Appeal concerning the limited importance of the background and the ‘v’ element of the mark applied for, or the descriptive character of the word ‘laboratoires’. Furthermore, as stated in paragraph 36 of the application, the applicant also concluded that there was a weak degree of similarity between the opposing marks.

30      Moreover, it should be noted that, as found by the Opposition Division and upheld by the Board of Appeal, the goods covered by the mark applied for are included amongst the cleaning preparations, perfumes, essential oils and cosmetics covered by the earlier mark. The applicant shares this assessment at paragraph 13 of the application by stating that the goods covered by the marks at issue are identical.

31      As stated in paragraph 24 of the contested decision, the finding of the Board of Appeal that there was a likelihood of confusion between the opposing marks was reasoned with reference, first, to an at least weak degree of visual similarity; secondly, to a high degree of phonetic similarity; thirdly, to the absence of a conceptual element which could counteract these similarities; fourthly, to the identity of the goods covered by the marks at issue and, fifthly, to the average attention of the consumer at the moment of purchase of these goods.

32      Even if, as the applicant claims, the phonetic similarity between the marks at issue is of limited importance, due to the way in which the goods covered are marketed, this circumstance would nonetheless lead to an at least weak degree of similarity between those marks. Combined with the other elements taken into account by the Board of Appeal, and in particular with the identity of the goods covered, this similarity justifies the finding of the Board of Appeal that there was a likelihood of confusion.

33      These findings are not affected by any theory that the proprietor of an earlier mark cannot require operators seeking to register a mark to keep greater distance from the earlier mark than that which the proprietor kept in relation to earlier marks than his own. In fact, opposition proceedings pursuant to Article 8(1)(b) and Article 41(1)(a) of Regulation No 207/2009 imply the assessment of the existence of a likelihood of confusion between the mark applied for and an earlier mark. As stated in paragraph 17 above, this assessment implies in particular an analysis of the visual, phonetic or conceptual similarity of the opposing marks. As a result, the analysis in question cannot be based upon a comparison of the earlier mark and other marks which are not part of the case under consideration.

34      The applicant’s argument, alleging the absence of any likelihood of confusion between the marks at issue due to the registration, on 26 February 2013, of the marks IDEALHYA, IDEALYANE and IDEALUNA, cannot succeed.

35      Certainly, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion between two marks at issue found by the bodies of EUIPO. However, that possibility can only be taken into consideration if, at the very least, during proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks on which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, not published, EU:T:2013:68, paragraph 51).

36      However, the marks put forward are, first, not identical to the earlier mark and, secondly, the fact that no notice of opposition was lodged against the registration of those marks is not enough to prove coexistence through lack of likelihood of confusion.

37      It follows from the foregoing that the single plea in law must be rejected, so that the action must be dismissed without it being necessary to rule on the plea of inadmissibility raised by EUIPO.

 Costs

38      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.

39      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders L’Oréal, SA, to pay the costs.

Gratsias

Kancheva

Wetter

Delivered in open court in Luxembourg on 28 April 2016.

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