Biovene Cosmetics v EUIPO - Eugène Perma France (BIOVÈNE) (EU trade mark - Judgment) [2021] EUECJ T-232/20 (30 June 2021)

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

Biovene Cosmetics, SL, established in Barcelona (Spain), represented by E. Estella Garbayo, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini 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

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

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 12 February 2020 (Case R 739/2019-4), relating to opposition proceedings between Eugène Perma France and Biovene Cosmetics,

composed of A.M. Collins, President, G. De Baere (Rapporteur) and G. Steinfatt, Judges,

having regard to the response of EUIPO lodged at the Court Registry on 24 August 2020,

having regard to the response of the intervener lodged at the Court Registry on 7 September 2020,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having 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,

1 On 18 November 2016, the predecessor in title to the applicant Biovene Cosmetics, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Cosmetics’.

4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2016/247 of 29 December 2016.

5 On 8 February 2017, the intervener, Eugène Perma France, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was based on the EU word mark BIORENE, which was filed on 29 June 2000 and registered on 30 July 2001 under the number 1739226 and covers goods in Class 3 of the Nice Agreement corresponding to the following description: ‘Soaps; soap products; perfumery, cosmetic creams, perfume, perfume extracts, eau de Cologne, essential oils, cosmetics, make-up and make-up removing preparations, nail varnish, depilatory preparations; hair lotions; hair creams, hair gels, hair lacquers, hair mousse; preparations for setting and waving hair, shampoo, brilliantines, hair fixing preparations, hair dyes, preparations for permanent waves and their neutralisers; preparations for straightening hair and their neutralisers; preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes, bleaching and lightening preparations for the hair; hair colours’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 The applicant requested, in accordance with Article 47(2) and (3) of Regulation 2017/1001, that the intervener furnish proof of genuine use of the earlier mark in connection with the goods in respect of which it was registered and on which the opposition was based.

9 On 21 March 2018, the intervener provided various documents for the purposes of proving genuine use of the earlier mark.

10 By request of 8 August 2018, the applicant restricted its trade mark application solely to the following goods: ‘Cosmetics other than for beauty and hair care’.

11 By decision of 4 February 2019, the Opposition Division upheld the opposition in its entirety and rejected the application for registration on the ground that there was a likelihood of confusion.

12 On 3 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Opposition Division.

13 By decision of 12 February 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

14 In the first place, the Board of Appeal found that the applicant had explicitly accepted the outcome of the Opposition Division’s decision regarding proof of use in relation to ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3. Consequently, it concluded that the assessment of the proof of use was not part of the scope of the appeal and that that issue did not have to be re-examined.

15 In the second place, the Board of Appeal found that the relevant territory was the whole of the European Union. Furthermore, it found that the goods in Class 3 were aimed at the general public, the level of attention of which for goods in that class was generally average, even though consumers could prove to be more attentive when acquiring body care products.

16 In the third place, the Board of Appeal pointed out that the ‘cosmetics other than for beauty and hair care’ covered by the mark applied for and the ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3 covered by the earlier mark were highly similar.

17 In the fourth place, the Board of Appeal found that the signs at issue were visually and phonetically similar to an above average degree. It took the view that, from a conceptual standpoint, the signs at issue had no meaning and that it was not therefore possible to carry out a conceptual comparison.

18 The Board of Appeal concluded that, taking into account the above average degree of visual and phonetic similarity between the signs at issue as well as the high degree of similarity between the goods in question and the normal inherent distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 with regard to all the goods covered by the mark applied for, even if a higher level of attention on the part of the relevant public with regard to the goods in Class 3 were taken into consideration.

– alter the Opposition Division’s decision and the contested decision and allow the application for the EU trade mark in its entirety;

– order EUIPO and the intervener to pay the costs of the present proceedings and the costs incurred before EUIPO.

21 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

22 Furthermore, it must be pointed out that, ratione temporis, the applicable substantive provisions in the present case are those of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21). According to the case-law of the Court of Justice, it is the substantive law in force on the filing date of the application for registration of the mark against which opposition proceedings are brought that continues to apply (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 2). Since the applicant applied for registration of the mark at issue on 18 November 2016, it is necessary, in the present case, to rely on Regulation No 207/2009.

23 In the application, the applicant puts forward arguments in order to call into question the Opposition Division’s assessment of the evidence of use. Accordingly, it submits that the evidence of use submitted by the intervener in the course of the opposition proceedings does not contain sufficient indications concerning the time and extent of use of the mark BIORENE. Furthermore, that evidence does not, according to the applicant, refer to any date of creation or publication.

24 The intervener disputes the merits of those claims and submits that the applicant’s arguments are irrelevant, in particular because the applicant had agreed with the Opposition Division’s assessment regarding genuine use of the earlier mark in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3.

25 EUIPO submits that the applicant’s arguments calling into question the assessment of the proof of use carried out by the Opposition Division are inadmissible and do not form part of the subject matter of the present proceedings.

26 It must be pointed out that Article 188 of the Rules of Procedure of the General Court provides that the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal.

27 According to settled case-law, the purpose of an action brought before the Court pursuant to 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, pursuant to Article 95 thereof, 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 (see order of 8 March 2019, Herrero Torres v EUIPO – DZ Licores (CARAJILLO LICOR 43 CUARENTA Y TRES), T‑326/18, not published, EU:T:2019:149, paragraph 34, and judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 120).

28 As regards the legal context, it must be observed that, in proceedings relating to relative grounds for refusal, the actual wording of Article 95(1) of Regulation 2017/1001 provides that EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when ruling on an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41; see also, order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 35).

29 The parties, in proceedings before the Court, do not therefore have the power to alter the legal context of the dispute, as set out in the claims and contentions which they had put forward during the proceedings before the Board of Appeal (order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 36).

30 In that regard, it must be pointed out that, in the contested decision, the Board of Appeal did not review the merits of the Opposition Division’s assessment regarding the proof of genuine use of the earlier mark, finding that that assessment was not part of the scope of the appeal before it.

31 The Board of Appeal was right in finding that, in its statement of grounds for the appeal, the applicant had agreed with the Opposition Division’s assessment regarding genuine use of the earlier mark in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3.

32 Furthermore, it must be stated that the applicant does not dispute that finding on the part of the Board of Appeal before the Court. The applicant submitted in the application that the evidence of use provided ‘refer[red] only to the use [of] the mark “BIORENE” relating to “[p]reparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes”’ and that ‘relating to the rest of the goods in class [3] of the … mark “BIORENE”’ the intervener had not therefore ‘file[d] any evidence of use’.

33 The applicant’s arguments seeking to call into question the evidence of use of the earlier mark must therefore be rejected as ineffective. Since it had been accepted that there had been genuine use in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’, the Board of Appeal was entitled to restrict its assessment of the likelihood of confusion to those goods alone. Consequently, the question of whether there was genuine use in connection with the other goods is irrelevant.

The issue of the admissibility of a document submitted for the first time before the Court

34 The intervener contends that Annex A 7 to the application must be rejected as inadmissible because it was submitted for the first time before the Court.

35 In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 4 October 2018, Frinsa del Noroeste v EUIPO – Alimentos Friorizados (Alfrisa), T‑820/17, not published, EU:T:2018:647, paragraph 59 and the case-law cited; judgment of 25 November 2020, Brasserie St Avold v EUIPO (Shape of a dark bottle), T‑862/19, EU:T:2020:561, paragraph 14).

36 As regards Annex A 7 to the application, which contains documents that are intended to show that the goods covered by the mark applied for are aimed at a specific type of user, it is sufficient to state they are documents which have been submitted for first time before the Court, with the result that they must be declared inadmissible.

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

37 The applicant submits, in essence, that there are no visual, phonetic and conceptual similarities between the marks at issue that are sufficient to establish that there is a likelihood of confusion. It also complains that the Board of Appeal erred when comparing the goods, analysing the distinctive and dominant elements of the marks at issue and carrying out the global assessment of the likelihood of confusion between those marks.

39 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.

40 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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; judgments of 4 October 2018, Alfrisa, T‑820/17, not published, EU:T:2018:647, paragraph 27, and of 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (Sadia), T‑309/19, not published, EU:T:2020:565, paragraph 53).

41 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 (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47; of 4 October 2018, Alfrisa, T‑820/17, not published, EU:T:2018:647, paragraph 28, and of 25 November 2020, Kisscolor Living v EUIPO – Teoxane (KISS COLOR), T‑802/19, not published, EU:T:2020:568, paragraph 24).

42 It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s assessment that the relevant public consists of the general public in the European Union, the level of attention of which is generally average, but could prove to be higher with regard to body care products.

43 The applicant disputes the Board of Appeal’s assessment regarding the comparison of the goods covered by the signs at issue.

44 As regards the comparison of the goods at issue, the Board of Appeal found that the goods covered by the mark applied for were ‘cosmetics other than for beauty and hair care’ and the goods covered by the earlier mark were ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’. It pointed out that the comparison of the goods had to be based on the wording indicated in the list of goods after the restriction requested by the applicant and confirmed by EUIPO. Consequently, the assessment of the goods covered by the mark applied for had to be based on ‘cosmetics other than for beauty and hair care' and not on ‘cosmetics and products for hygiene, beauty and care of the skin, hands, feet, body and skin’, as mentioned by the applicant in the statement of grounds for the appeal.

45 The Board of Appeal then stated that the term ‘cosmetic’ was defined according to the Oxford English Dictionary as ‘a preparation intended to beautify the hair, skin or complexion’ and that Article 1 of Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products (OJ 1976 L 262, p. 169) defined a ‘cosmetic product’ as ‘any substance or mixture intended to be placed in contact with the various external parts of the human body … or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance and/or correcting body odours and/or protecting them or keeping them in good condition’. The Board of Appeal therefore concluded that both the goods covered by the earlier mark and the goods covered by the mark applied for were cosmetic products, which was even acknowledged by the applicant.

46 The Board of Appeal found that, although the goods covered by the mark applied for excluded those ‘for beauty and hair care’, the respective goods all had the same general purpose, namely to care for and clean the human body. It stated that they could, moreover, be used alongside each other or in a complementary manner. It also took the view that it was conceivable that the goods at issue could have the same nature and frequency of use and that they could be sold on the same shelves of the same outlets and be aimed at the same consumers. The Board of Appeal therefore concluded that the goods at issue were highly similar.

47 The applicant submits that the goods covered by the mark applied for must be categorised as ‘cosmetics other than for beauty and hair care’. Furthermore, it argues that the Board of Appeal erred in finding that the goods covered by the mark applied for were highly similar to the goods covered by the earlier mark. According to the applicant, even though the goods are ‘cosmetics’, they differ in their nature and purpose, since the goods covered by the mark applied for are cosmetics for the skin, whereas those covered by the earlier mark are only products for the hair and scalp. Furthermore, it submits that the substances used are not the same and that they are not applied in the same way and with the same frequency. Lastly, it claims that the goods are aimed at different generations of consumers with very different needs. The applicant concludes that the goods at issue are similar only to a very low degree.

48 First, it must be pointed out that, in order to assess whether the goods at issue are similar for the purposes of Article 8(1)(b) of Regulation 2017/1001, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed under those marks (judgment of 16 June 2010, Kureha v OHIM – Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71; order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 59, and judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 40).

49 In the present case, it is sufficient to state that the Board of Appeal was right in finding that the comparison of the goods had to be based on the wording indicated in the list of goods after the restriction requested by the applicant and that, consequently, the assessment of the goods covered by the mark applied for had to be based on ‘cosmetics other than for beauty and hair care' and not on ‘cosmetics and products for hygiene, beauty and care of the skin, hands, feet, body and skin’.

50 Secondly, according to settled case-law, in assessing the similarity of the goods or services 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; judgments of 28 November 2019, Soundio v EUIPO – Telefónica Germany (Vibble), T‑665/18, not published, EU:T:2019:825, paragraph 27, and of 25 November 2020, Sadia, T‑309/19, not published, EU:T:2020:565, paragraph 61).

51 In the present case, it must be stated that, in spite of the applicant’s restriction of the list of goods covered, both the goods covered by the earlier mark and those covered by the mark applied for are cosmetics, since they have the same intended purpose, namely to care for and clean the human body.

52 Moreover, there is nothing to preclude the ‘cosmetics other than for beauty and hair care’ covered by the mark applied for and the ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ covered by the earlier mark from being used alongside each other or in a complementary manner.

53 Furthermore, the goods at issue may be sold in the same sales outlets and it is not uncommon for the manufacturers of those goods to be the same (see, to that effect, judgments of 27 September 2007, La Mer Technology v OHIM – Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 112, and of 13 June 2019, Pielczyk v EUIPO – Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM), T‑398/18, not published, EU:T:2019:415, paragraph 101).

54 Lastly, the applicant’s argument that the goods are aimed at different generations of consumers with very different needs can also not succeed. The applicant does not establish why the goods at issue could not be used by the same category of consumers.

55 Consequently, it must be held that the Board of Appeal was right in finding that the goods at issue were highly similar.

56 The applicant submits that the distinctive and dominant elements of the marks at issue are ‘biovène’ with regard to the mark applied for and ‘biorene’ with regard to the earlier mark. It claims that those elements create overall impressions that are different from a phonetic and conceptual standpoint.

57 The Board of Appeal found that, in spite of the weakly distinctive element ‘bio’, the earlier mark as a whole had no clear or direct meaning in relation to the goods in Class 3 and therefore had a normal degree of distinctiveness.

58 In the present case, it must be stated that the applicant does not put forward any valid argument seeking to dispute the Board of Appeal’s assessment regarding the determination of the distinctive and dominant elements of the signs at issue. It confines itself to claiming that the word elements create different overall impressions and that there is consequently no likelihood of confusion.

59 The applicant disputes the Board of Appeal’s assessment regarding the visual, phonetic and conceptual comparison of the signs at issue.

60 According to settled case-law, 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; judgments of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 41, and of 23 September 2020, Brillux v EUIPO – Synthesa Chemie (Freude an Farbe), T‑401/19, not published, EU:T:2020:427, paragraph 34).

61 In the first place, from a visual standpoint, the Board of Appeal pointed out that the signs had in common the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’, which were present identically in both signs, and that they differed only in the letters ‘r’ and ‘v’ and in the grave accent on the ‘e’ of the mark applied for. However, it stated that those differences had only a slight visual impact, particularly because they were in the middle of the sign. It pointed out that consumers generally pay greater attention to the beginning of a mark than to its ending. The Board of Appeal therefore concluded that the signs at issue were visually similar to an above average degree.

62 In that regard, it is sufficient to state that the word elements of which the marks at issue consist are very similar since they have in common the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’ placed in the same order and differ only in their central letters and the accent on the first ‘e’. Those differences have only a slight visual impact.

63 Furthermore, it must be stated that the applicant does not put forward any argument seeking to dispute the Board of Appeal’s assessment regarding the visual similarity of the signs at issue. Although the applicant states in the application that the marks are visually different to an above average degree, it confines itself in its comparison of the signs at issue to analysing the phonetic, aural and conceptual similarity between the signs.

64 Consequently, the Board of Appeal was right in finding that the signs were visually similar to an above average degree.

65 In the second place, from a phonetic standpoint, the Board of Appeal found that the pronunciation of the signs at issue coincided in the sense that they had the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’ in common and found that the relevant public would pronounce them in a similar way. According to the Board of Appeal, the difference in sound produced by the fourth letter in each of the signs, ‘r’ and ‘v’ respectively, was mitigated by the position of those letters in the middle of the signs.

66 Consequently, the Board of Appeal concluded that the signs at issue were phonetically similar to an above average degree.

67 According to the applicant, the signs differ phonetically in a number of respects. First, the final parts of the signs at issue are totally different. Secondly, the sign applied for includes the labial consonant ‘v’, whereas the earlier mark includes the lingual consonant ‘r’. Consequently, the applicant submits that the pronunciation of the marks at issue is completely different. Furthermore, it argues that, since the word element ‘biovène’ in the mark applied for is a French word, the final vowel, ‘e’, in that word is not pronounced. Lastly, the applicant submits that the difference in the location of the dominant tonic syllables in the marks ensures that they produce a completely different sound.

68 In that regard it must be pointed out that the signs at issue have in common the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’, which will be pronounced in the same way. Consequently, the fact that the signs differ in that the earlier mark contains the letter ‘r’, whereas the mark applied for contains the letter ‘v’, does not call into question the similarity of the signs resulting from the presence of the same letters, ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’.

69 As regards the applicant’s argument that the element ‘biovène’ is a French word in which the vowel ‘e’ will not be pronounced, the answer must be that the applicant does not state the reason why the same rules of pronunciation could not apply to both of the signs at issue. In any event, as the Board of Appeal rightly points out, the presence or absence of the grave accent will not have any effect on the phonetic similarity for the part of the relevant public for which accents do not exist. The fact that the mark applied for contains a grave accent does not therefore result in any difference in pronunciation for the relevant public.

70 As regards, lastly, decision B 731 853 of the Opposition Division (Case TANA/TANIT) of 27 June 2006, which the applicant relies on in support of its argument that the pronunciation of the marks at issue produces a completely different sound, it must be pointed out that, according to the case-law, decisions concerning the registration of a sign as an EU trade mark which are taken by the Boards of Appeal pursuant to Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion, with the result that the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union. Consequently, the Boards of Appeal cannot be bound by the previous decisions of EUIPO (see judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart), T‑123/18, EU:T:2019:95, paragraph 36 and the case-law cited; judgment of 19 December 2019, Nosio v EUIPO (BIANCOFINO), T‑54/19, not published, EU:T:2019:893, paragraph 51, and order of 15 October 2020, Lotto24 v EUIPO (LOTTO24), T‑38/20, not published, EU:T:2020:496, paragraph 33). Furthermore, the TANA/TANIT case is irrelevant with regard to the outcome of the present proceedings because it concerned marks which are completely different from those at issue in the present case.

71 Consequently, the Board of Appeal was right in finding that the signs at issue were phonetically similar to an above average degree.

72 Lastly and in the third place, from a conceptual standpoint, the Board of Appeal found that neither of the signs as a whole had any clear or apparent meaning for the relevant public. It added that, even though the prefix ‘bio’ in the signs at issue was likely to be understood by the whole of the public as an abbreviation of the words ‘biological’ or ‘biology’, that content could be considered to possess a weak degree of distinctiveness and could not therefore be given too much weight. The Board of Appeal concluded that, in such a case, a conceptual comparison of the signs was not possible and could not therefore have an influence on the similarity of those signs.

73 The applicant states that the elements ‘biovène’ and ‘biorene’ in the opposing marks do not have any meaning and that they evoke an abstract idea in the mind of the consumer. It concludes that the signs at issue are therefore very dissimilar from a conceptual standpoint.

74 As regards the conceptual similarity between the signs, it must be stated, as the Board of Appeal did, that, even though the prefix ‘bio’ in the signs at issue is likely to evoke the terms ‘biological’ or ‘biology’ in the mind of the relevant public, that conceptual content cannot suffice to confer a clear and specific meaning on those signs. Furthermore, the applicant does not dispute the finding that the signs as a whole do not have any clear meaning.

75 Since the relevant public will not attribute any specific meaning to the two signs, it must be held, as the Board of Appeal found in paragraph 46 of the contested decision, that a conceptual comparison is not possible (see, to that effect, judgments of 22 May 2012, Retractable Technologies v OHIM – Abbott Laboratories (RT), T‑371/09, not published, EU:T:2012:244, paragraph 41; of 13 May 2015, Ferring v OHIM – Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 69, and of 8 July 2020, FF Group Romania v EUIPO – KiK Textilien und Non-Food (_kix), T‑659/19, not published, EU:T:2020:328, paragraph 84).

76 In the light of the preceding paragraphs, the Board of Appeal did not err in finding that the signs were visually and phonetically similar to an above average degree and that a conceptual comparison between those signs was not possible.

77 The applicant submits that the marks at issue are completely different visually, phonetically and conceptually and cannot in any way be subject to a likelihood of confusion. Furthermore, it argues that the distinctive and dominant elements of the two marks at issue are different. Lastly, it submits that the consumer’s level of knowledge of the marks is a crucial element in assessing the likelihood of confusion. In this respect, the applicant takes the view that social networks play an important role. It argues that the fact that the mark applied for has an Instagram account which has more than 412 000 subscribers indicates a high level of knowledge of that mark on the market. According to the applicant, it follows that the overall impressions created by the signs at issue are very different and that that is sufficient to rule out any likelihood of confusion.

78 According to settled case-law, 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; of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 56, and of 23 September 2020, Freude an Farbe, T‑401/19, not published, EU:T:2020:427, paragraph 68).

79 It must be pointed out that the Board of Appeal carried out a global assessment of the relevant factors. It found that, in view of the high degree of similarity between the goods at issue, the above average degree of visual and phonetic similarity between the signs and the normal inherent distinctiveness of the earlier mark, the differences between the signs at issue were not sufficient to rule out any likelihood of confusion on the part of the general public, even considering that that public might display a higher level of attention.

80 Those minor differences are particularly liable to go unnoticed because 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; judgments of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 41, and of 23 September 2020, Freude an Farbe, T‑401/19, not published, EU:T:2020:427, paragraph 34).

81 As regards the applicant’s argument that the consumer’s level of knowledge of the marks is a crucial element in assessing the likelihood of confusion, it must be pointed out that, even though the level of knowledge of the marks may play a certain role in the context of the assessment of the likelihood of confusion, that assessment also depends on numerous other factors, like the degree of similarity between the marks at issue and between the goods or services covered. The applicant’s conclusion that there is no likelihood of confusion between the signs at issue is based mainly on the lack of similarity of the goods and of the signs at issue. However, as has been held in paragraphs 55 and 76 of the present judgment, the Board of Appeal was right in finding that the goods at issue were similar and the signs at issue were similar.

82 For the sake of completeness, it must be pointed out that, since the particular circumstances in which the goods and services at issue are marketed may vary over time depending on the wishes of the proprietors of the marks at issue, it is inappropriate to take those circumstances into account for the purpose of analysing whether there will be a likelihood of confusion between those marks (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59). Consequently, the Board of Appeal was right in rejecting, in paragraph 26 of the contested decision, the arguments of the applicant which were essentially based on a comparison of the marketing strategies which it and the intervener adopted in order to market their goods.

83 The applicant has not therefore put forward any argument which is capable of calling into question the Board of Appeal’s reasoning regarding the global assessment of the likelihood of confusion and consequently the single plea must be rejected.

84 In view of all of the foregoing, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second and third heads of claim.

85 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Biovene Cosmetics v EUIPO - Eugène Perma France (BIOVÈNE) (EU trade mark - Judgment) [2021] EUECJ T-232/20 (30 June 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T23220.html Cite as: [2021] EUECJ T-232/20, EU:T:2021:396, ECLI:EU:T:2021:396

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