L'Oreal v EUIPO - Heinze (K K WATER) (EU trade mark - Judgment) [2022] EUECJ T-610/21 (09 November 2022)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

(EU trade mark – Opposition proceedings – Application for EU figurative mark K K WATER – Earlier EU figurative mark K – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

L’Oréal, established in Paris (France), represented by T. de Haan, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Eberl 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

Arne-Patrik Heinze, residing in Hamburg (Germany), represented by N. Dauskardt, lawyer,

composed, at the time of the deliberations, of A. Kornezov (Rapporteur), President, K. Kowalik-Bańczyk and D. Petrlík, Judges,

1 By its action based on Article 263 TFEU, the applicant, L’Oréal, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2021 (Case R 2327/2020-2) (‘the contested decision’).

2 On 10 July 2019, the applicant filed an application with EUIPO for registration of the following figurative sign as an EU trade mark:

3 The application for registration concerned goods 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, corresponding to the following description: ‘hair preparations and treatments; hair care preparations not for medical purposes; preparations for setting hair’.

4 On 15 August 2019, the intervener, Mr Arne-Patrik Heinze, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5 The opposition was based on the earlier EU figurative mark No 17 676 206 shown below, covering several goods in Class 3, including, inter alia, ‘shampoos’ and ‘lotions for cosmetic purposes’, as well as goods in Classes 29, 30 and 31:

6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

7 On 22 October 2020, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 2017/1001.

8 On 8 December 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By the contested decision, the Board of Appeal annulled the decision of the Opposition Division and upheld the appeal. It took the view that it was likely that a significant part of the relevant public in the European Union would be led to believe that identical goods bearing similar marks came from the same undertaking or, as the case may be, from undertakings that were economically linked.

– order EUIPO and the intervener to pay the costs, including those incurred in the proceedings before the Board of Appeal.

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

13 Under 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 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.

14 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).

15 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).

16 The applicant does not dispute the definition of the relevant public adopted by the Board of Appeal, according to which that public consists of the public at large in the European Union, whose degree of attention is average.

17 Nor – as it confirmed at the hearing – does the applicant dispute that the goods covered by the mark applied for, namely ‘hair preparations and treatments; hair care preparations not for medical purposes; preparations for setting hair’ in Class 3, are identical to the ‘shampoos’ and ‘lotions for cosmetic purposes’ in the same class covered by the earlier mark.

18 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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).

19 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). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

21 The Board of Appeal noted, in paragraph 28 of the contested decision, that the earlier mark consisted of a stylised letter ‘k’ depicted on a black, rectangular background.

22 As regards the mark applied for, according to the contested decision it consists of a slightly stylised letter ‘k’, in a large, bold font, below which, in a smaller size, appear the word elements ‘k’ and ‘water’ in standard capital letters. All those elements are depicted on a black, square background. Accordingly, the large letter ‘k’ occupies a dominant position in that sign and the smaller-sized elements ‘k’ and ‘water’, whilst not negligible, are secondary, ‘or distinctly secondary’ in the overall impression created by that mark. Furthermore, since the word ‘water’ is a synonym for the words ‘hydro’ and ‘hydrate’, which denote the basic ingredient used to manufacture goods intended for the treatment of hair, that element has, at most, a weak distinctive character in relation to the goods concerned. Lastly, the smaller-sized element ‘k’ would be regarded only as a repetition of the larger letter ‘k’.

23 The applicant considers that the Board of Appeal made several errors in its assessment of the relevant public’s perception of the mark applied for. First, the Board of Appeal gave an incomplete description of that sign, omitting to mention that its word elements were depicted in a pink-grey colour. Secondly, the Board of Appeal did not correctly assess the importance of the word elements ‘k water’, completely neglecting them in its analysis. Thirdly, in contrast to the Board of Appeal, it is appropriate to assess the distinctive character of the combination ‘k water’ as a whole and not the elements ‘k’ and ‘water’ taken individually. The combination ‘k water’, which is written in capital letters and is clearly visible and audible, is very distinctive for the goods concerned in Class 3, with the result that it should have been regarded as co-dominant. Fourthly, the applicant submits that the Board of Appeal erred in asserting that the word ‘water’ had, at most, a weak distinctive character. It argues that it is well known, nowadays, that hair care products are developed, and even promoted, as anhydrous products, and that water is not the basic ingredient of those products.

24 EUIPO concedes that the Board of Appeal did not mention the pink-grey colour of the word elements of the mark applied for. It considers, however, that that colour is hardly noticeable and that the applicant does not put forward any argument seeking to demonstrate that the use of that colour is distinctive or important in the overall impression created by the mark applied for. Next, according to EUIPO, the Board of Appeal correctly found that the element ‘water’ had a weak distinctive character, in so far as it is well known that water is a basic ingredient in products used to treat hair. Lastly, EUIPO considers that the Board of Appeal correctly noted that, due to its size, position and intrinsic qualities, the element ‘k water’ was of secondary importance in comparison to the large letter ‘k’.

26 In the present case, first, it should be noted that the mark applied for consists of a slightly stylised letter ‘k’, written in a large, bold font, below which, in a smaller size, appear the word elements ‘k water’, in standard capital letters. All those elements are depicted on a black, square background. It is not disputed by the parties that the black, square background is a purely decorative element.

27 In that regard, it must be held, as the Board of Appeal did, that the letter ‘k’ which appears in the upper part of the mark applied for is, due to its size, the dominant element of that sign. In contrast, the Board of Appeal’s analysis of the word elements ‘k water’ cannot be upheld. Those elements, which appear in the lower part of the sign in question and are written in capital letters (smaller in size, admittedly, but nonetheless sufficiently large for them to be clearly visible and perfectly legible), occupy a significant and notable part of the sign. Thus, due to their size, their font and their positioning, they are emphasised in the layout of that sign. Therefore, although those elements may be described as secondary in relation to the dominant element, their importance cannot be reduced to the point of actually rendering them negligible and of examining the similarity of the signs solely on the basis of their dominant elements.

28 However, the Board of Appeal, in essence, disregarded the importance of the word elements ‘k water’ of the mark applied for. In essence, in the visual and conceptual comparison of the marks at issue, it failed to take account of the presence of those word elements (see paragraphs 31 to 40 and 46 to 50 below). Thus, in the light of the case-law cited in paragraph 19 above, the Board of Appeal could not limit its assessment of the similarity of the marks at issue to a comparison of the single large letter ‘k’ of that sign with the earlier mark.

29 Secondly, it should be noted, as the applicant does, that the distinctive character of the word elements ‘k water’ must be assessed on the basis of that combination, taken together, and not by artificially splitting it into two separate parts, namely (i) the element ‘k’ and (ii) the element ‘water’, as the Board of Appeal did. Indeed, by virtue of their positioning on the same line in the lower part of the mark applied for, their equal size and their graphic sequence, those elements appear as a whole and cannot be artificially split in two (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35). However, whilst the relevant public will probably associate those elements with the concept of water, the combination ‘k water’ does not, as such, have a clear and precise meaning for that public, with the result that it has a fanciful, or even striking, quality, as the applicant correctly submits. Accordingly, the Board of Appeal erred in finding that the word elements ‘k water’ were at most weakly distinctive, if distinctive at all.

30 Thirdly, the applicant correctly submits that the Board of Appeal ignored the fact that the word elements of the mark applied for were depicted in a pink-grey colour. The Board of Appeal erred in stating, in paragraph 41 of the contested decision, that the overall impression of the marks at issue, likely to be retained by the relevant public, was largely determined by the recollection that public had of a white capital letter ‘k’ inside a black square. Contrary to EUIPO’s assertions, that error is not irrelevant, since it concerns an element which differentiates the marks at issue, with the result that the Board of Appeal’s examination of the mark applied for is also incomplete in that regard.

31 The Board of Appeal found, in paragraphs 31 and 32 of the contested decision, that the marks at issue were visually similar to an average degree, on the ground that the capital letter ‘K’, although depicted in a different font, was the dominant element of the signs in question, placed on a simple, black, box-shaped background, which gave them the same ‘dynamism’. Thus, since the overall impression given by the marks at issue was determined by those elements, their stylistic differences, which were of minor importance, did not manage to dispel entirely the impression of visual similarity between them.

32 The applicant claims that the Board of Appeal carried out a visual comparison of the marks at issue on the basis of an incomplete description of those marks. It failed to take into account the word elements ‘k water’ of the mark applied for. Similarly, the Board of Appeal did not correctly assess the impact of the graphic differences between the marks at issue, namely the straight, angular, bold and modernist stylisation of the mark applied for as compared to the curved, italicised, handwriting with a double line effect of the earlier mark. The Board of Appeal also failed to take into account the difference in the colours of the letters and words, namely white in the earlier mark and pink-grey in the mark applied for. Lastly, the black background or black square in the marks at issue is common for goods in Class 3 and is therefore devoid of distinctive character.

33 EUIPO and the intervener contend that the differences in the font, colour, stylisation and background of the marks at issue play a minor role, on the ground that the relevant public will focus above all on the word elements of those marks. They consider that the Board of Appeal was right to establish the visual comparison between the signs by focusing on the large letter ‘k’ of those signs.

34 It should be borne in mind, first, that the Board of Appeal failed to take into consideration the visual impact of the word elements ‘k water’ of the mark applied for.

35 Secondly, the Board of Appeal incorrectly assessed the differences in the stylisation of the marks at issue. In that regard, it merely stated, in paragraph 31 of the contested decision that the ‘stylistic differences’ – which it neither identified nor described – were ‘of minor importance’. However, the letter ‘k’ of the earlier mark, which is highly stylised, is in calligraphic writing, with the effect of fine, white, curved, double lines dividing the interior of that letter into black and white colours, whereas the letter ‘k’ of the mark applied for is depicted in a straight-lined, angular, bold font and in a pink-grey colour.

36 Therefore, as the applicant submits, it must be held that those graphic and stylistic differences are not minor but are clearly visible. That is all the more so in the case of very short elements, consisting of a single letter, so that it is more likely that the relevant public will easily perceive such differences (see, to that effect, judgments of 23 September 2009, Arcandor v OHIM – dm drogerie markt (S-HE), T‑391/06, not published, EU:T:2009:348, paragraph 41, and of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 31).

37 Likewise, the stylisation and the arabesques of the letter ‘k’ of the earlier mark give it an air of movement or dynamism which is not present in the mark applied for. Thus, contrary to the Board of Appeal’s finding, the marks at issue do not share the same dynamism.

38 Thirdly, as is apparent from paragraph 31 above, the Board of Appeal failed to take account of the difference in the colours of the word elements of the marks at issue.

39 Lastly, as regards the same rectangular, black background which appears in both of the marks at issue, it should be noted that such a standard black background is often used in the course of trade in order to make letters written in lighter colours stand out, the result of which is that that element is purely decorative, which is not disputed by the parties.

40 Consequently, whilst it is true that the marks at issue resemble each other, inasmuch as they include a large letter ‘k’, they are nevertheless distinguishable, first, by the different graphics and stylisation of that letter and, second, by the visible presence of the word elements ‘k water’ only in the mark applied for, as well as by the different colours of their word elements. Accordingly, the visual similarity between those marks must be regarded as low. The fact that they also include a black, box-shaped background, which is purely decorative, does not alter that finding.

41 The Board of Appeal found, in paragraph 33 of the contested decision, that it was likely that at least a significant part of the relevant public would pronounce neither the additional letter ‘k’ nor the word ‘water’ of the mark applied for. Furthermore, according to the Board of Appeal, even if all the word elements of that sign were to be pronounced, the marks at issue would coincide in the sound of the strong letter ‘k’, whereas they would differ in the additional letter ‘k’ and the word ‘water’ of the mark applied for. Thus, the marks at issue would be, ‘at least’, phonetically similar to a low degree.

42 The applicant considers that the marks at issue are phonetically different, since the mark applied for will be pronounced in three or four syllables, whereas the earlier mark will be pronounced in a single syllable. It considers, in the alternative, that the marks at issue have ‘the lowest’ degree of phonetic similarity.

43 EUIPO and the intervener consider that the Board of Appeal’s assessment is free from error.

44 It must be held that the Board of Appeal underestimated the phonetic impact of the elements ‘k water’ of the mark applied for, in finding that a significant part of the relevant public would probably not pronounce them. As has been pointed out above, those elements are clearly visible, with the result that, as the applicant claims, the relevant public will pronounce the mark applied for either in three or in four syllables. That pronunciation has a very different sound and length from those resulting from the pronunciation of the earlier mark, consisting of a single letter ‘k’ in isolation.

45 Therefore, phonetically, the marks at issue cannot be considered to be similar only to a low degree.

46 The Board of Appeal found, in essence, in paragraphs 34 to 38 of the contested decision, that the conceptual comparison of the marks at issue was neutral, in so far as the letter ‘k’ had no meaning with regard to the goods included in Class 3, with the result that no concept could be associated with them.

47 The applicant does not actually dispute the Board of Appeal’s finding. It specifies, however, that the word ‘water’, which has a meaning in the present case, is an additional differentiating factor between the marks at issue.

48 EUIPO does not express a view on that point and the intervener states that it agrees with the Board of Appeal’s assessment.

49 In that regard, irrespective of whether and under what conditions a single letter of the alphabet is able to convey a concept, it must be stated that, in the present case, it was not established that the capital letter ‘K’ had a particular meaning in one of the languages of the European Union; nor did the parties indicate what concept would be conveyed by that letter in the present case (see, by analogy, judgment of 7 October 2014, Tifosi Optics v OHIM – Tom Tailor (T), T‑531/12, not published, EU:T:2014:855, paragraph 81). Consequently, the Board of Appeal was correct in finding that no concept could be associated with that letter.

50 In addition, it must be stated, as the applicant does, that the Board of Appeal again ignored the presence of the elements ‘k water’ in the mark applied for. Indeed it limited its conceptual assessment of the marks at issue to the single letter ‘k’, common to those marks. However, the relevant public will probably associate the combination ‘k water’ with the concept of water.

51 Therefore, in so far as the earlier mark does not convey any particular meaning, whereas the mark applied for will be associated with the concept of water, it must be held that the marks at issue are conceptually different.

52 The Board of Appeal noted, in paragraph 39 of the contested decision, that the earlier mark, which was devoid of meaning in relation to the goods in question, had a normal distinctive character from the point of view of the relevant public.

53 According to the applicant, a single letter has only a weak, or even a very weak, distinctive character, as was held in paragraph 44 of the judgment of 16 December 2015, CareAbout v OHIM – Florido Rodríguez (Kerashot) (T‑356/14, not published, EU:T:2015:978). Thus, in the present case, it is only the very specific stylisation of the letter ‘k’ of the earlier mark that confers a ‘minimum’ degree of distinctive character on that mark.

55 In that regard, it must be borne in mind that the legislature expressly included signs consisting of one letter in the list of signs which may constitute an EU trade mark, set out in Article 4 of Regulation 2017/1001, and that Articles 7 and 8 of that regulation, relating to refusal of registration, do not lay down specific rules for signs consisting of one letter. Thus, one letter is, in itself, capable of conferring distinctive character on a trade mark (see, to that effect, judgments of 11 October 2016, Perry Ellis International Group v EUIPO – CG (p), T‑350/15, not published, EU:T:2016:602, paragraphs 56 and 60, and of 10 June 2020, eSky Group IP v EUIPO – Gröpel (e), T‑646/19, not published, EU:T:2020:253, paragraphs 45 and 50).

56 According to the case-law, a sign consisting of a single letter has a minimum degree of distinctive character or a weak, or even very weak, distinctive character, where that letter is not stylised or is only slightly stylised or where the other figurative elements of the sign in question are not striking (see, to that effect, judgments of 16 December 2015, Kerashot, T‑356/14, not published, EU:T:2015:978, paragraph 44 and the case-law cited, and of 20 July 2017, Diesel v EUIPO – Sprinter megacentros del deporte (Representation of a curved and angled line), T‑521/15, not published, EU:T:2017:536, paragraphs 60 and 61). By contrast, where a sign consists of a highly stylised letter or is accompanied by other relatively elaborate figurative elements, that sign may be recognised as having normal distinctive character (see, to that effect, judgments of 10 June 2020, e, T‑646/19, not published, EU:T:2020:253, paragraphs 45 and 50, and of 25 June 2020, Pavel v EUIPO – bugatti (B), T‑114/19, not published, EU:T:2020:286, paragraph 96).

57 In the present case, the Court considers that the inherent distinctive character of the earlier mark is normal, given that mark’s lack of meaning in relation to the goods that it covers and the high degree of stylisation of the letter ‘k’, which appears in calligraphic writing, with an effect of fine, white, curved, double lines dividing the interior of that letter into black and white.

58 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).

59 In the present case, the Board of Appeal found, in essence, in paragraphs 40 to 48 of the contested decision, that a likelihood of confusion could not be ruled out for the relevant public displaying an average degree of attention, given the identity of the goods, the average degree of visual similarity (which was of greater importance in the case at hand in view of the circumstances in which the goods in question were marketed), and the low degree of phonetic similarity, as well as the normal distinctive character of the earlier mark.

60 The applicant disputes that finding. It claims, primarily, that there is no likelihood of confusion, since the marks at issue are different. It submits, in the alternative, that, if the visual aspect must be regarded as having greater weight on account of the methods by which the goods in question are marketed, the visual differences between the signs must be regarded as sufficient to enable the relevant public to identify the commercial origin of goods bearing those signs.

61 EUIPO and the intervener consider that the Board of Appeal correctly assessed the likelihood of confusion, taking into account all the relevant factors.

62 In the present case, the goods in question are identical, whereas the marks at issue display a low degree of visual and phonetic similarity and are conceptually different.

63 The parties agree that, in the present case, the visual comparison is of particular importance, having regard to the methods by which the goods in question are marketed, because they are generally purchased on a self-service basis and the consumer has the opportunity to inspect the product visually. Thus, the significant differences between the marks at issue, particularly the visual differences noted in paragraph 40 above, mean it is impossible that consumers will believe that the goods in question come from the same undertaking or from economically linked undertakings when they are sold under those marks (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 133 (not published)).

64 Furthermore, regarding, as in the present case, short signs, and having regard to the case-law cited in paragraph 36 above, the relevant public, which displays an average degree of attention, will be able to notice more clearly the abovementioned differences between the marks at issue.

65 That finding is borne out by the low degree of phonetic similarity between the marks at issue and by the conceptual difference between them.

66 Furthermore, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 20 October 2016, Clover Canyon v EUIPO – Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 55). In the present case, the normal distinctive character of the earlier mark is not sufficient for a finding of a likelihood of confusion, given the considerable visual, phonetic and conceptual differences between the marks at issue.

67 In that regard, it should be borne in mind that, according to the case-law, the principle of interdependence should not be applied mechanically. Indeed, a mechanical application of the principle of interdependence does not ensure a correct global assessment of the likelihood of confusion (see, to that effect, judgment of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraph 95). Thus, in particular, there is nothing to preclude a finding that, in the light of the circumstances of a particular case, there is no likelihood of confusion, even where the goods are identical and there is a low degree of similarity between the marks at issue (see, to that effect, judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 79).

68 Furthermore, a finding that amounts to recognising a likelihood of confusion between two signs, one consisting primarily of a highly stylised, single capital letter and the other consisting of the same capital letter but written in a very different stylisation and combined with other word elements, would de facto amount to granting a monopoly over one capital letter of the alphabet for a specific range of goods. The Court has already had occasion to assess that risk, pointing out that the purpose of the opposition brought on the basis of a sign consisting of a single letter is to prevent the registration of a trade mark which is likely to give rise to a likelihood of confusion with an earlier mark, ‘in particular on account of its stylistic similarity’. In contrast, according to the Court, the purpose of the opposition is not to prevent the registration of a trade mark because it represents the same capital letter; nor is it to prevent the registration of all other trade marks consisting of such a letter (see, to that effect, judgment of 20 July 2017, Representation of a curved and angled line, T‑521/15, not published, EU:T:2017:536, paragraph 72).

69 Thus, having regard to all the foregoing considerations, it must be held that the Board of Appeal made an error of assessment in finding that there was a likelihood of confusion.

70 Accordingly, and without it being necessary to examine the applicant’s complaints alleging a failure to state reasons for the contested decision, the single plea in law raised by the applicant must be upheld and, consequently, the contested decision must be annulled.

71 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.

72 Under Article 138(3) of the Rules of Procedure, the Court may order an intervener other than those referred to in paragraphs 1 and 2 of that article to bear his, her, or its own costs.

73 Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.

74 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, including those incurred for the purposes of the proceedings before the Board of Appeal, in accordance with the form of order sought by the applicant.

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2021 (Case R 2327/2020-2);

2. Orders EUIPO to bear its own costs and to pay those incurred by L’Oréal, including those incurred for the purposes of the proceedings before the Board of Appeal;

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> L'Oreal v EUIPO - Heinze (K K WATER) (EU trade mark - Judgment) [2022] EUECJ T-610/21 (09 November 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T61021.html Cite as: ECLI:EU:T:2022:700, EU:T:2022:700, [2022] EUECJ T-610/21

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