House of Prince v EUIPO - Bialy (AROMA KING) (EU trade mark - Judgment) [2024] EUECJ T-118/23 (06 November 2024)

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( EU trade mark - Opposition proceedings - Application for EU figurative mark AROMA KING - Earlier national word mark KING’S - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Enhanced distinctiveness of the earlier mark - No independent distinctive role )

House of Prince A/S, established in Copenhagen (Denmark), represented by I. Fowler, I. Junkar and B. Worbes, lawyers,

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

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

Andrzej Biały, residing in Myszków (Poland), represented by J. Nykiel, lawyer,

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,

1 By its action under Article 263 TFEU, the applicant, House of Prince A/S, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 December 2022 (Case R 777/2022-1) (‘the contested decision’).

2 On 7 August 2020, the intervener, Mr A. Biały, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:

3 The mark applied for covered, inter alia, goods in Class 34 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: ‘Loose, rolling and pipe tobacco; Tobacco free oral nicotine pouches [not for medical use]; Pipes for smoking mentholated tobacco substitutes; Herbal molasses [tobacco substitutes]; Snus; Snus without tobacco; Snus with tobacco; Substances for inhalation using water pipes, in particular aromatic substances; Tobacco substitutes; Tobacco substitutes not for medical purposes; Snuff; Snuff without tobacco; Snuff with tobacco; Tobacco; Flavored tobacco; Smokeless tobacco; Pipe tobacco; Smoking tobacco; Cigarette tobacco; Tobacco products; Mentholated tobacco; Cigarettes; Cigars; Cigarillos; Smokers’ articles of precious metal; Smokers’ articles, not of precious metal; Cigarette paper; Pipe stems; Books of cigarette papers; Cigarette holders; Electronic smoking pipes; Electronic cigarette cases; Cigar pouches; Tobacco pipes; Mentholated pipes; Cigarette tips; Tobacco filters; Cigar cutters; Cigarette tubes; Pocket machines for rolling cigarettes; Tobacco products for the purpose of being heated; Smoking urns; Ready-made cigarette tubes with filters; Pipe cleaners for tobacco pipes; Electronic cigarette boxes; Hand held machines for injecting tobacco into paper tubes; Tobacco pipe scrapers; Cigarette cutters; Bags for pipes; Pipe tampers; Holders for electronic cigarettes; Devices for heating tobacco substitutes for the purpose of inhalation; Electronic cigarette cleaners; Devices for heating tobacco for the purpose of inhalation; Mouth pieces for pipes; Mouthpieces for cigarettes; Cigar holders; Tobacco pouches; Pipe stoppers [smokers requisites]; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette atomizers; Liquid solutions for use in electronic cigarettes; Electronic cigars; Inhalers for use as an alternative to tobacco cigarettes; Electronic cigarette cartomizers; Cartridges for electronic cigarettes; Refill cartridges for electronic cigarettes; Electronic cigarettes; Electronic cigarette liquid [e-liquid] comprised of vegetable glycerin; Electronic cigarette liquid [e-liquid] comprised of propylene glycol; Electronic cigarette liquid [e-liquid] comprised of flavorings in liquid form used to refill electronic cigarette cartridges; Tobacco tar for use in electronic cigarettes; Electronic devices for the inhalation of nicotine containing aerosol; Electronic nicotine inhalation devices; Oral vaporizers for smokers; Smokeless cigarette vaporizer pipes; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Smoking sets for electronic cigarettes; Flavourings, other than essential oils, for use in electronic cigarettes; Safety matches; Sulfur matches; Match holders; Matchboxes’.

4 The mark applied for also covered numerous retail and wholesale services in Class 35 relating, in essence, to the goods in Class 34 referred to in paragraph 3 above.

5 On 21 December 2020, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services covered. Following the limitation of its scope made on 17 May 2021, the opposition covered the goods and services referred to in paragraphs 3 and 4 above.

– the earlier Danish word mark KING’S (‘the earlier mark KING’S’ or ‘the earlier mark’), registered on 17 November 2011 under reference VR 2011 02862, covering the goods in Class 34 and corresponding to ‘cigarettes; tobacco; tobacco products; lighters; matches; articles for smokers’;

– the earlier Danish figurative mark KING’S FAVOURITES, registered on 30 July 1993 under reference VR 1993 05646 in respect of ‘cigarettes’ in Class 34;

– the earlier Danish word mark KINGS, registered on 9 June 1972 under reference VR 1972 01871 in respect of ‘cigarettes’ in Class 34;

– the earlier Danish word mark KINGS FAVOURITES, registered on 16 November 1946 under reference VR 1946 01816 in respect of all the goods in Class 34;

– the earlier Danish figurative mark KING’S, registered on 27 July 2020 under reference VR 2020 01384 in respect of certain goods, inter alia ‘cigarettes’ and ‘tobacco products’ in Class 34.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation (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). In support of the opposition, the applicant relied on the reputation and enhanced distinctiveness of the earlier marks in Denmark in respect of all the goods for which those marks were registered. It submitted numerous items of evidence in support of its claim.

8 On 9 March 2022, the Opposition Division upheld the opposition in its entirety on the basis of the earlier mark KING’S on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

9 On 8 May 2022, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division.

10 By the contested decision, the Board of Appeal upheld the appeal, annulled the decision of the Opposition Division in its entirety and remitted the case to the Opposition Division for further prosecution. In particular, it considered, based on the earlier mark KING’S, that there could be no likelihood of confusion on the part of the relevant public under Article 8(1)(b) of Regulation 2017/1001. It added that the result could not be different in relation to the other earlier marks relied on by the applicant as they enjoyed the same scope of protection and were either identical to that earlier mark or even less similar to the sign applied for due to the presence of additional elements. The Board of Appeal concluded that, since the opposition was not successful on the basis of Article 8(1)(b) of Regulation 2017/1001, it still had to be examined on the basis of the remaining ground, namely Article 8(5) of that regulation. It therefore remitted the case to the Opposition Division for the purpose of assessing the ground for refusal set out in that article.

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

Admissibility of the action as regards the earlier marks other than the earlier mark KING’S

14 It is necessary to examine the admissibility of the action as regards the earlier marks other than the earlier mark KING’S (see paragraph 6 above).

15 Under Article 177(1)(d) of the Rules of Procedure of the General Court, each application must state, inter alia, the subject matter of the proceedings and the pleas in law and arguments relied on. That statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if appropriate, without any further supporting information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic factual and legal particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (see judgment of 6 December 2023, BB Services v EUIPO – Lego Juris (Shape of a toy figure with a protrusion on its head), T‑297/22, EU:T:2023:780, paragraph 16 and the case-law cited).

16 In the present case, it should be noted that, in paragraph 44 of the application, in the context of its arguments regarding the conceptual comparison of the signs at issue, the applicant did state that, to the extent that the genitive form of the earlier mark had an impact on the dissimilarities between the signs, the Board of Appeal was required to take into consideration the other marks relied on in the opposition which did not contain the genitive form of the word ‘king’, in particular the earlier Danish word mark KINGS.

17 However, it must be stated that, as regards the earlier marks other than the earlier mark KING’S, the applicant has not relied on any other specific argument alleging, for instance, a procedural infringement or an error in the assessment of the facts. In particular, as regards those other earlier marks, it has not claimed that there is enhanced distinctiveness through use or a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001. Accordingly, the application does not meet the minimum requirements of Article 177(1)(d) of the Rules of Procedure as regards those trade marks.

18 It follows that the action must be dismissed as inadmissible in so far as it concerns the earlier marks other than the earlier mark KING’S.

19 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea in law consists of five complaints, alleging (i) a flawed assessment of the dominant elements of the mark applied for, resulting in the flawed finding that there is no likelihood of confusion; (ii) a flawed assessment of the level of similarity between the signs; (iii) a failure to take into account the fact that the earlier mark is almost entirely included in the mark applied for, which normally leads to a high likelihood of confusion; (iv) a flawed reduction in the level of similarity based on the assumption that ‘king’ or ‘king’s’ is a weakly distinctive term; and (v) a failure to take into account the very high degree of enhanced distinctiveness and the (high degree of) reputation of the earlier mark in the global assessment of the likelihood of confusion.

21 Those complaints must be examined as part of the assessment of the likelihood of confusion in the present case.

22 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the contested trade mark is not to be registered if, because of its identity with, or similarity to, an 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, the term ‘earlier trade mark’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

23 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).

24 In the present case, as regards the relevant public and its level of attention, the Board of Appeal found, as did the Opposition Division, that the relevant goods and services were directed at the public at large (in relation to all the contested goods in Class 34 and the contested retail services in Class 35) and at business customers with specific professional knowledge or expertise (in relation to the contested wholesale services in Class 35). It considered that the public’s degree of attentiveness could vary from average to high, depending on the price, specialised nature or terms and conditions of the goods and services purchased. Thus, when buying matches, which in principle are inexpensive, the degree of attention would be average. By contrast, the Board of Appeal found that, although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes that they smoke, and therefore a higher degree of brand loyalty and attention is assumed when tobacco products and the retail services for such products are involved. It concluded that the degree of attention was therefore average to higher than average. Furthermore, it found that, as the opposition was based on an earlier Danish trade mark, the relevant territory was Denmark.

25 As regards the comparison of the goods and services at issue, the Board of Appeal found, as did the Opposition Division, that the goods and services in Classes 34 and 35 covered by the mark applied for were identical or similar to various degrees to the goods in Class 34 covered by the earlier mark.

26 There is no need to call into question those findings of the Board of Appeal, which, moreover, are not disputed by the applicant.

27 By the first and second complaints, which it is appropriate to examine together, the applicant complains that the Board of Appeal made errors of assessment relating to the distinctive and dominant elements of the signs at issue and to the degree of visual, phonetic and conceptual similarity between those signs. It submits that the Board of Appeal incorrectly concluded that those signs were similar only to a low degree, whereas it should have found that there was a high degree of visual, phonetic and conceptual similarity.

29 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).

30 The comparison must be made by examining each of the marks in question as a whole. Thus, assessment of the similarity between two marks in principle means more than taking just one component of a composite trade mark and comparing it with another mark. It is only in circumstances where the overall impression conveyed to the relevant public by a composite trade mark is dominated by one or more of its components and where all the other components of that mark are negligible that the assessment of the similarity can, by way of exception, be carried out solely on the basis of the dominant element (see, to that effect, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42).

32 In paragraphs 42 to 44 of the contested decision, the Board of Appeal found, inter alia, that the common word element ‘king’ was laudatory or praiseful (in the sense of ‘the best in [its] field’ or ‘of [the] best quality’), had a low degree of distinctive character and was not the dominant element of the mark applied for. It also found that the word expression ‘aroma king’ was likely to have a unitary meaning for the relevant public, since it would be perceived metaphorically as referring to the idea of the ‘king of aroma’.

33 The applicant complains that the Board of Appeal erred in finding that the word ‘king’ did not constitute the dominant element of the mark applied for. According to the applicant, that word refers to royalty, but does not in any way convey a laudatory or praiseful message. Moreover, it submits that, even if it were weak, the word ‘king’ would still dominate the mark applied for due to its size and position in that mark. In that regard, it maintains that the other elements of that mark, namely the word ‘aroma’ and the figurative element in the shape of a crown, are totally non-distinctive, with the result that the element ‘king’ is the most distinctive.

34 According to the case-law, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In particular, account may be taken of the size and relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

35 In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited).

36 Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression given by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).

37 In the present case, it must be observed at the outset that the word ‘king’ does not constitute the dominant element of the mark applied for to the point of making the other elements of that mark secondary. First of all, its size is only slightly larger than that of the word ‘aroma’ and it is represented in the same font just below that word. Moreover, the figurative element in the shape of a crown occupies almost the same amount of space as the word ‘king’ in that mark. Consequently, the applicant’s claim that the element ‘king’ stands out visually in that mark to the point of being its dominant element and making the other elements secondary to that element cannot succeed.

38 Similarly, it must be observed that the word ‘king’ does not constitute the most distinctive element of the mark applied for. As the Board of Appeal stated in paragraph 42 of the contested decision, it will be perceived as a laudatory term referring to the positive characteristics of the goods and services at issue and conveying a laudatory message such as ‘the best in [its] field’ or ‘of [the] best quality’, notwithstanding its literal meaning of ‘a male ruler of [a sovereign] state’. Contrary to what the applicant claims, it is unlikely that it will simply be perceived as a reference to royalty or sovereignty, in particular as regards the goods and services at issue. Consequently, in the present case, it must be held that that element ‘king’ has only a low degree of distinctive character (see, to that effect, judgments of 8 December 2015, Compagnie générale des établissements Michelin v OHIM – Continental Reifen Deutschland (XKING), T‑525/14, not published, EU:T:2015:944, paragraphs 32 to 34; of 12 March 2020, Gwo Chyang Biotech v EUIPO – Norma (KinGirls), T‑85/19, not published, EU:T:2020:100, paragraph 26; and of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO), T‑31/20, not published, EU:T:2021:217, paragraph 85 and the case-law cited).

39 It is true that, as the Board of Appeal observed, in essence, in paragraph 43 of the contested decision, the distinctive character of the other elements of the mark applied for is just as weak in respect of the goods and services at issue. Indeed, the word element ‘aroma’, in that context, means a ‘distinctive, usually pleasant smell, especially of spices, wines and plants’ (see judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 25 and the case-law cited) and will be perceived as describing a characteristic of tobacco products and related services, whereas the figurative element in the shape of a crown reinforces the word element ‘king’, refers to the same concept and will be perceived as also conveying a laudatory message such as ‘the best in its field’ or ‘of the best quality’. However, contrary to what the applicant claims, it cannot be inferred from this that the word ‘king’ is more distinctive than those elements and will therefore be perceived by the relevant public as an indicator of the commercial origin of those goods and services.

40 It must also be pointed out, as the Board of Appeal did in paragraphs 43 and 44 of the contested decision, that the mark applied for will be perceived as a whole as having the unitary meaning of ‘king of aroma’ (the term ‘king’ being understood in the metaphorical sense of the ‘best in its field’ and not in the literal sense of a ‘male sovereign’), without the relevant public focusing on its separate elements.

41 It is precisely in the combination of all its elements, including the logical unit formed by the terms ‘king’ and ‘aroma’, meaning ‘king of aroma’, and the figurative element in the shape of a crown, that the distinctive character of the mark applied for lies. It is a fanciful combination of various elements which, although weakly distinctive in themselves, create an overall impression that will be remembered by the relevant public.

42 The Board of Appeal did not therefore make an error of assessment, in paragraphs 42 to 44 of the contested decision, when it found, in essence, that the mark applied for did not contain any element that was dominant or more distinctive than the others and that, consequently, that mark would be perceived as a whole by the relevant public.

43 In paragraph 46 of the contested decision, the Board of Appeal found that, to the extent that the signs at issue coincided in the descriptive element ‘king’, they were similar. However, in its view, those signs also showed important differences, namely, their completely different designs and structures, both in terms of the representation of the word elements and the additional figurative elements. That board found that the mark applied for contained an additional word element, namely the word ‘aroma’, which made it visually larger and longer. It contained, in addition to that word element, a crown and two parallel lines framing the word elements. Moreover, the earlier mark contained the additional letter ‘s’ with an apostrophe preceding it. Consequently, the Board of Appeal concluded that the signs are visually similar to a low degree. Lastly, it observed that the sole element ‘king’, on which any consideration of similarity rested, was laudatory since it referred to the goods and services at issue, with the result that it would attract the relevant public’s attention only to a limited extent.

44 As regards the visual comparison, the applicant complains that the Board of Appeal incorrectly focused on small differences and failed to take account of the fact that the earlier mark was almost entirely included in the mark applied for, by virtue of the overlap in the element ‘king’. According to the applicant, there is a high degree of visual similarity between the signs at issue.

45 First of all, it is true that it is apparent from the case-law that, where an earlier mark is entirely contained in the mark applied for, that is a factor to be taken into consideration in assessing the similarity between those two marks (see, to that effect, judgment of 20 April 2018, holyGhost v EUIPO – CBM (holyGhost), T‑439/16, not published, EU:T:2018:197, paragraph 33 and the case-law cited).

46 However, in the present case, it must be stated that the earlier mark KING’S is only partially contained in the mark applied for, given that the apostrophe and the final letter ‘s’ of the earlier mark do not appear in the mark applied for. Although the applicant claims that the earlier mark is ‘almost entirely included’ in the mark applied for, it must be observed that the missing elements, namely the apostrophe and the letter ‘s’, play an important role in the overall impression given by the earlier mark. The distinctiveness of the earlier mark, whether inherent or enhanced through use, lies in the combination of all its elements and is not limited solely to the element ‘king’, as maintained by the applicant.

47 Next, as observed in paragraph 38 above, the element ‘king’ of the mark applied for also has a low degree of distinctive character. Consequently, the importance of the fact that that weakly distinctive element is included in both of the signs at issue must be evaluated and reduced accordingly. Due to its weak distinctive character, that common element ‘king’ has only a relatively limited impact on the overall impression given by those signs.

48 As is apparent from the case-law cited in paragraph 46 of the contested decision, the degree of distinctiveness of the common elements plays a crucial role in the comparison of the signs (see, to that effect, judgment of 12 May 2021, Metamorfoza v EUIPO – Tiesios kreivės (MUSEUM OF ILLUSIONS), T‑70/20, not published, EU:T:2021:253, paragraph 67).

49 More specifically, it must be pointed out that the descriptiveness or weakly distinctive character of an element which is common to two signs considerably or appreciably reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account (see, to that effect, judgments of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 67 and the case-law cited, and of 12 October 2022, Shopify v EUIPO – Rossi and Others (Shoppi), T‑222/21, under appeal, EU:T:2022:633, paragraph 60 (not published)).

50 Furthermore, the applicant is incorrect in claiming that the additional word and figurative elements in the signs at issue can have only an ‘incidental impact’ or secondary impact during the comparison.

51 First, as regards the additional elements of the mark applied for, while that mark has a low degree of distinctiveness, the word element ‘aroma’ and the figurative element in the shape of a crown play an important role in the overall impression given by that mark. Moreover, the graphic representation of that mark and its overall structure in three parts separated by lines cannot be disregarded, given that they contribute to the overall visual impression conveyed by that sign.

52 It must therefore be observed that only one of the three elements of the mark applied for is common to both of the signs at issue. Furthermore, that common element ‘king’ is just as weak as the additional elements and will not be perceived by the relevant public as the main commercial identifier of that mark.

53 In that regard, it must be observed, as EUIPO contends, that the applicant’s reasoning contains some contradictions. The applicant submits, on the one hand, that the common element ‘king’ has a normal or average degree of distinctiveness and, on the other, that the figurative element in the shape of a crown in the mark applied for, which serves to emphasise the element ‘king’, is devoid of any distinctiveness. The figurative element in the shape of a crown must be regarded as having the same distinctiveness as the word ‘king’.

54 Consequently, although the stylistic and figurative elements in the mark applied for are not highly distinctive, they contribute, in view of their not insignificant impact on the impression given by that mark, to creating an overall visual impression of that mark which is at most faintly similar to that given by the earlier mark.

55 Second, as regards the additional components of the earlier mark, the applicant is incorrect in attempting to minimise the importance of the apostrophe and of the letter ‘s’ contained in the ending of that mark. Given that the part ‘king’ is weakly distinctive, the addition of those components makes a not insignificant contribution to the overall distinctiveness of the earlier mark, in that they add a layer of complexity to its perception.

56 In the light of the foregoing, and emphasising that the overlap between the signs at issue due to the presence in both of the laudatory and weakly distinctive element ‘king’ can result in only a low degree of visual similarity between them, it must be held that the signs at issue are visually similar to a low degree.

57 Therefore, the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually similar to a low degree.

58 In paragraph 47 of the contested decision, the Board of Appeal considered that the signs at issue coincided in the pronunciation of the word ‘king*’. It found that the pronunciation differed in the sound of the first word ‘aroma’ of the mark applied for and in the final letter ‘s’ of the earlier mark, which did not have any counterpart in the other sign. In view of those considerations and of the fact that the phonetic similarity was based on a weakly distinctive element, it concluded that the phonetic similarity of the signs at issue was low.

59 The applicant submits that the earlier mark is almost entirely included in the mark applied for and that the non-distinctive element ‘aroma’ cannot reduce the high degree of phonetic similarity.

60 In that regard, it must be observed that the signs at issue differ on account of the pronunciation of the word element ‘aroma’ in the mark applied for and by virtue of the final letter ‘s’ in the earlier mark, which play an important role in the overall impressions given by those marks and are not negligible (see paragraphs 46 and 50 to 55 above). Furthermore, the weak distinctive character of the common element ‘king’ (see paragraph 38 above) appreciably reduces the relative weight of that element in the comparison of the signs (see paragraphs 47 to 49 above), even though its presence must be taken into account. Consequently, the presence of the common element ‘king’ makes those signs similar only to a low degree.

61 Therefore, the Board of Appeal did not make an error of assessment in finding that the signs at issue were phonetically similar to a low degree.

62 In paragraph 48 of the contested decision, the Board of Appeal considered that the signs at issue referred to the concept of a king. It found that the earlier mark, however, was in the genitive form (used to mean that something belongs to the king), whereas the word element of the mark applied for referred to a king in the metaphorical sense (an aroma which is so full that it is fit for a king or that it is the best possible aroma). Taking into account the impact of the weakly distinctive character of the common element ‘king[’s]’, it concluded that the conceptual similarity between the signs at issue was low.

63 The applicant submits that the signs at issue are conceptually highly similar, since they overlap in the concept of the ‘king’, namely a male ruler.

64 First of all, it must be observed, as the Board of Appeal did in paragraph 43 of the contested decision, that the word expression ‘aroma king’ in the mark applied for is likely to have a unitary meaning for the relevant public since it will be perceived as referring to the ‘king of aroma’ in the metaphorical sense of the term ‘king’, meaning ‘the best in its field’. Consequently, although it includes the word ‘king’, the mark applied for does not convey the same conceptual connotation as that conveyed by the earlier mark KING’S, which refers to something belonging to a male sovereign in a possessive form.

65 For those reasons, and in view of the weak distinctive character of the common element ‘king’, it must be held that the conceptual similarity between the signs at issue, taken as a whole, is low.

66 Therefore, the Board of Appeal did not make an error of assessment in finding that the signs at issue were conceptually similar to a low degree.

67 In addition, as regards the applicant’s argument that, to the extent that the Board of Appeal considered that the addition of the genitive form of the earlier mark was in any way significant for precluding a finding that there was a higher level of conceptual similarity, that board should then have also considered the level of similarity between the other marks relied on in the opposition, in particular the registration of the earlier Danish word mark KINGS, which merely referred to the plural of the word ‘king’ as opposed to the genitive form ‘king’s’, it must be recalled that the action is inadmissible in so far as it concerns the earlier marks other than KING’S (see paragraphs 14 to 18 above). In any event, the Board of Appeal’s reasoning was based on the reference to a king in the metaphorical sense (the best) as opposed to the literal meaning (leader), irrespective of whether it was presented in the genitive form (king’s) or in the plural form (kings), which would have been even more different.

68 Consequently, the Board of Appeal’s assessment, in paragraphs 42 to 48 of the contested decision, concerning the distinctive and dominant elements of the marks at issue and the similarity between them is not vitiated by any error of assessment.

70 By the fifth complaint, the applicant submits, inter alia, that, on account of the reputation enjoyed by the earlier mark in Denmark, that mark should have been regarded as having a high degree of distinctiveness enhanced through use.

72 In paragraphs 51 to 54 of the contested decision, the Board of Appeal found, as did the Opposition Division, that the earlier mark KING’S, even though it had a low degree of inherent distinctiveness in view of the fact that its word element ‘king’s’ was laudatory in relation to the goods covered by it, nevertheless had ‘somewhat enhanced’ distinctiveness on account of its long-standing use for cigarettes and tobacco products in Denmark, as the applicant had demonstrated in Annexes 5 to 7, 15, 16, 19, 20, 22 and 25 to 27 to its opposition. According to the Board of Appeal, taken as a whole, the evidence showed that the earlier trade mark had been subject to long-standing and intensive use for ‘cigarettes’, and was generally known in Denmark where it enjoyed a consolidated position among the leading cigarette brands, as had been attested by independent sources. It found that, in particular, the brand awareness surveys relating to that mark and data regarding the corresponding market share, supported by the marketing expenditures and invoices, demonstrated that that mark was recognised by a substantial part of the relevant public. The same applied to cigarettes, since they were included in the broad category of tobacco products. The Board of Appeal concluded that ‘the effect of that enhancement [was] to upgrade the distinctive force of the earlier [mark] from inherently weak to a normal level of distinctiveness for cigarettes and tobacco [and tobacco products]’. For the same reason, it found that that mark had an inherently low degree of distinctiveness for the remaining goods, namely lighters, matches and articles for smokers.

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

74 First of all, it must be pointed out that, contrary to what the applicant claims, the reputation of the earlier mark is not a precondition for the application in the present case of Article 8(1)(b) of Regulation 2017/1001, unlike with regard to the application of Article 8(5) of that regulation. Assessing the reputation of that mark in the context of Article 8(1)(b) of Regulation 2017/1001 – in respect of which the distinctiveness of that mark, possibly enhanced through use, is relevant – would risk making a premature determination as to the precondition for the potential application in the present case of Article 8(5) of that regulation, which has not yet been examined by the Opposition Division.

75 The Board of Appeal was therefore correct, in paragraphs 51 to 54 of the contested decision, in not assessing, in the context of the application of Article 8(1)(b) of Regulation 2017/1001 in the present case, the question whether the earlier mark has a reputation in Denmark.

76 Next, it must be examined whether the Board of Appeal was correct in concluding that, since the earlier mark had only a low degree of inherent distinctiveness, its ‘somewhat enhanced’ distinctiveness could be strengthened only to a normal or average degree, or whether the fact that a mark is recognised by a certain part of the relevant public necessarily means that it must be regarded as having a high degree of distinctiveness.

77 In that regard, it must be recalled that there is, admittedly, a certain interdependence between the recognition of a mark on the market concerned and its distinctiveness in that the more the mark is recognised by the target public, the more the distinctiveness of that mark is strengthened (judgment of 12 July 2006, VITACOAT, T‑277/04, EU:T:2006:202, paragraph 34).

78 However, in assessing the distinctiveness of a mark, account should be taken, in particular, of the inherent characteristics of that mark, including the fact that it does or does not contain any element that is descriptive or laudatory of the goods or services for which it has been registered (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 23 and 28).

79 Therefore, it must be held, as EUIPO contends, that the fact that, because of its use, a mark is recognised by a certain part of the relevant public does not necessarily mean that it must be regarded as having a high degree of distinctiveness. This depends on the assessment of the overall circumstances of a specific case and, in particular, on both the degree of inherent distinctiveness of the mark concerned and the degree of its recognition by the target public.

80 In the present case, it must be observed that, given that the earlier mark, on account of the laudatory character of its element ‘king’, has only a low degree of inherent distinctiveness, the recognition which it enjoys with the relevant public in Denmark is not necessarily sufficient for it to be regarded as highly distinctive for the purposes of the assessment under Article 8(1)(b) of Regulation 2017/1001.

81 The Board of Appeal therefore did not err in law or make an error of assessment in paragraphs 51 to 54 of the contested decision when it found, in essence, that the enhancement of the earlier mark through its use in Denmark had the effect of upgrading the distinctiveness of that mark from inherently weak to a normal – but not high – degree in respect of cigarettes, tobacco and tobacco products.

83 By the third, fourth and fifth complaints, the applicant complains that the Board of Appeal made various errors of assessment in the global assessment of the likelihood of confusion.

85 In paragraphs 58 to 66 and 68 of the contested decision, the Board of Appeal, in the light of the factors previously set out in that decision, found that there could be no likelihood of confusion on the part of the relevant public, especially in view of (i) the weak distinctive character of the common element ‘king’ creating similarity, (ii) the low degree of distinctive character of the earlier mark in respect of ‘lighters; matches; articles for smokers’, and (iii) the different overall impression given by the signs at issue. Thus, according to that board, the additional figurative elements of the mark applied for contributed towards differentiating the marks at issue. It added that, even if the earlier mark had an enhanced distinctiveness of low to average in respect of tobacco products and cigarettes, the other factors prevented any likelihood of confusion. It stated that, irrespective of that enhanced distinctiveness, the common element ‘king’ conveyed a laudatory message in respect of all the overlapping goods and services, with the result that any similarity resulting from that word would not lead to a likelihood of confusion. It observed that such a conclusion was consistent with the case-law relating to weakly distinctive overlapping terms. The Board of Appeal concluded, taking into account the relevant factors and their mutual interdependence, that there was no reason to assume that a significant part of the relevant public would be misled into thinking that the goods and services bearing the signs at issue came from the same undertaking or, as the case may be, from economically linked undertakings. It stated that the applicant’s references to previous decisions of EUIPO could not alter those findings.

86 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 (see judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 69 and the case-law cited; see also, by analogy, judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).

87 Where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 12 October 2022, Shoppi, T‑222/21, under appeal, EU:T:2022:633, paragraph 120 (not published)).

88 In the present case, for the purposes of the global assessment of the likelihood of confusion, it is necessary to distinguish between the goods and services covered which are identical or similar to ‘cigarettes; tobacco; tobacco products’ covered by the earlier mark, on the one hand, and the goods and services covered which are identical or similar to ‘lighters; matches; articles for smokers’ covered by that mark, on the other, it being understood that those two groups may overlap and that some of the goods or services covered may belong to each of the two groups for the purposes of the analysis.

89 First, as regards the goods and services covered which are identical or similar to ‘cigarettes; tobacco; tobacco products’ covered by the earlier mark, it should be recalled that that mark has enhanced distinctiveness of a normal or average degree in respect of those goods, but also that the level of attention of the relevant public was considered to be higher than average, if not high (see paragraph 24 above).

90 Therefore, it must be held, with regard to the global assessment of the likelihood of confusion concerning the first group of goods and services, that, in view of the low degree of visual, phonetic and conceptual similarity between the marks at issue, due to the presence in both of the laudatory and weakly distinctive element ‘king’, the logical unit formed by the terms ‘aroma king’ (meaning ‘king of aroma’ in the metaphorical sense of the ‘best’ in that field) within the mark applied for, and the higher than average – if not high – level of attention of the relevant public, notwithstanding the average degree of enhanced distinctiveness of the earlier mark and notwithstanding the identity or varying degrees of similarity of the goods and services at issue, no likelihood of confusion, even indirect, can exist.

91 Second, as regards the goods and services covered which are identical or similar to ‘lighters; matches; articles for smokers’ covered by the earlier mark, it should be recalled that the level of attention of the relevant public was considered to be average (see paragraph 24 above), but also that that mark has only a low degree of distinctiveness, not enhanced through use, with the result that the Board of Appeal was entitled to engage in a fortiori reasoning with respect to those goods and services.

92 Therefore, it must be held, with regard to the global assessment of the likelihood of confusion concerning the second group of goods and services, that, in view of the low degree of visual, phonetic and conceptual similarity between the marks at issue, due to the presence in both of the laudatory and weakly distinctive element ‘king’, the logical unit formed by the terms ‘aroma king’ (meaning ‘king of aroma’ in the metaphorical sense of the ‘best’ in that field) within the mark applied for, and the weak distinctiveness of the earlier mark, notwithstanding the average level of attention of the relevant public and notwithstanding the identity or varying degrees of similarity of the goods and services at issue, no likelihood of confusion, even indirect, can exist.

93 As regards the second group of goods and services, it should also be recalled that, in the case of a trade mark with a weak distinctive character, the degree of similarity between the signs should, in principle, be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor (see, to that effect, judgments of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 56, and of 12 October 2022, Shoppi, T‑222/21, under appeal, EU:T:2022:633, paragraph 125 (not published)).

94 The Board of Appeal was therefore correct in finding that, taking into account all the relevant factors and their mutual interdependence, there was no reason to assume that a significant part of the relevant public would be misled into thinking that the goods and services bearing the signs at issue came from the same undertaking or, as the case may be, from economically linked undertakings.

95 Those findings cannot be called into question by the applicant’s third and fourth complaints or by its fifth complaint in so far as it relates to the global assessment of the likelihood of confusion.

96 By the third complaint, alleging a failure to take into account the fact that the earlier mark is almost entirely included in the mark applied for, the applicant complains that the Board of Appeal failed to take adequate account of the fact that the earlier mark is ‘almost entirely included’ in the mark applied for and that the element ‘king’, even if its dominant character were not accepted, retains an ‘independent distinctive role’ in that mark, which should normally lead to a finding of a high likelihood of confusion.

97 It should be recalled that the concept of ‘independent distinctive role’ stems from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), concerning national infringement proceedings. According to that judgment, where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the sign at issue is composed by juxtaposing the company name of another party and a registered mark (or an earlier mark in the context of opposition proceedings) which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign and without constituting the dominant element of that sign, still has an independent distinctive role therein (see, to that effect and by analogy, judgments of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 30 and 37, and of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38).

98 In that regard, it must be pointed out that the application of the concept of ‘independent distinctive role’ in opposition proceedings (or, mutatis mutandis, in cancellation proceedings) is subject to the fulfilment of a number of cumulative conditions relating, first, to the identity (or near-identity) of the element common to the signs at issue; second, to the distinctiveness of that element; and, third, to the independence of that element.

99 First, the earlier mark must, in principle, be entirely contained, that is to say, reproduced identically, in the mark applied for (see, to that effect, judgments of 28 September 2016, Kozmetika Afrodita v EUIPO – Núñez Martín and Machado Montesinos (KOZMeTIKA AFRODITA), T‑574/15, not published, EU:T:2016:574, paragraph 45 and the case-law cited; of 24 November 2016, CG v EUIPO – Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraph 76 and the case-law cited; and of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 45).

100 That condition is not satisfied in the present case. The mark applied for does not contain the earlier mark KING’S in its entirety, but only one of the elements in that earlier mark, namely the term ‘king’. The fact that the earlier mark is ‘almost’ entirely contained, but not reproduced identically, in the mark applied for gives rise to a significant difference in the present case, since the presence of the apostrophe and of the letter ‘s’ at the end of the earlier mark influences the distinctiveness of that mark. Consequently, the removal of those elements in the mark applied for is significant in the sense that it reduces the likelihood that the relevant public might attribute to the applicant the origin of the goods or services covered by the mark applied for.

101 Accordingly, the applicant is not justified in complaining that the Board of Appeal did not, in the present case, find that the term ‘king’ retained an independent distinctive role in the mark applied for. Since the earlier mark does not consist solely of that term, the applicant can also not validly claim that the relevant public is liable to perceive it as a sub-brand in the mark applied for (see, to that effect, judgment of 15 October 2020, Body Attack Sports Nutrition v EUIPO – Sakkari (SAKKATTACK), T‑851/19, not published, EU:T:2020:485, paragraph 108).

102 It is true that the General Court has held that there could also be a likelihood of confusion in a case in which the earlier mark was not reproduced identically in the later mark, allowing for minor alterations that do not go beyond near-identity (see, to that effect, judgments of 10 October 2012, Bimbo v OHIM – Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraphs 96 and 97; of 26 May 2016, Aldi Einkauf v EUIPO – Dyado Liben (Casale Fresco), T‑254/15, not published, EU:T:2016:319, paragraphs 42 and 43; and of 14 June 2017, Aydin v EUIPO – Kaporal Groupe (ROYAL & CAPORAL), T‑95/16, not published, EU:T:2017:388, paragraph 73). However, on appeal, the Court of Justice did not expressly confirm that approach (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraphs 24 to 29, and of 8 November 2023, SkinIdent v EUIPO – Beiersdorf (NIVEA SKIN-IDENTICAL Q10), T‑665/22, not published, EU:T:2023:704, paragraph 43).

103 In the present case, in any event, the element ‘king’ cannot be regarded as near-identical to the earlier mark KING’S and the alteration resulting from the removal of the apostrophe and of the letter ‘s’ in the mark applied for cannot be regarded as minor, since those elements play an important role in the overall impression given by the earlier mark (see paragraph 46 above).

104 Second, the earlier mark must, in principle, have a normal or average – and not low – degree of distinctiveness (see, to that effect, order of 9 March 2007, Saiwa v OHIM, C‑245/06 P, not published, EU:C:2007:160, paragraph 51, and judgment of 28 May 2020, Workspace Group v EUIPO – Technopolis Holding (UMA WORKSPACE), T‑506/19, not published, EU:T:2020:220, paragraph 56). By way of exception, even an element which has only weak distinctive character may still have an independent distinctive role in the mark applied for, since it may, because of, inter alia, its position in the sign or its size, make an impression on consumers and be remembered by them (judgments of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 40, and of 13 October 2021, Sedus Stoll v EUIPO – Kappes (Sedus ergo+), T‑436/20, not published, EU:T:2021:699, paragraph 86).

105 That is the case here, where the earlier mark has a normal or average degree of enhanced distinctiveness, at least in respect of cigarettes, tobacco and tobacco products (see paragraph 81 above).

106 Third, it must be stated that a component of a composite sign does not retain an independent distinctive role if, together with the other component or components of the sign, that component forms a logical unit having a different meaning as compared with the meaning of those components taken separately (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25 and the case-law cited; see also, to that effect, judgments of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑386/15, EU:T:2017:632, paragraphs 54, 61 and 91 (not published), and of 19 December 2019, Amigüitos pets & life v EUIPO – Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect), T‑40/19, not published, EU:T:2019:890, paragraph 51). The third condition is therefore the absence of such a logical unit, that is to say, the independence of the common element.

107 That condition is not satisfied in the present case. As stated in paragraphs 40 and 41 above, within the mark applied for, the element ‘king’ is closely linked to the preceding term ‘aroma’, with which it forms a logical unit meaning ‘king of aroma’, with the result that it is not independent.

108 Since the conditions relating to the identity (or near-identity) and the independence of the common element are not satisfied in the present case, it follows that the element ‘king’ of the earlier mark cannot be regarded as having an ‘independent distinctive role’ in the mark applied for. Thus, the Board of Appeal took adequate account of the fact that the earlier mark was, as the applicant claims, ‘almost entirely included’ in the mark applied for.

109 In the light of the foregoing, the fact that the element ‘king’ of the earlier mark is included in the mark applied for cannot, in the specific circumstances of the present case, lead to a likelihood of confusion.

111 By the fourth complaint, alleging a flawed reduction in the level of similarity based on the assumption that ‘king’ or ‘king’s’ is a weakly distinctive term, the applicant complains that the Board of Appeal erred in finding that the common element ‘king’ of the signs at issue had a low degree of distinctiveness and, as a result, artificially reduced the level of similarity between those signs. Furthermore, it submits, in essence, that, even if that common element were weak, it would still be the dominant element of the mark applied for, with the result that there would still be a likelihood of confusion.

112 At the outset, it must be recalled, as observed in paragraph 38 above, that the common element ‘king’ is laudatory and weakly distinctive in both of the marks at issue.

113 In accordance with the case-law referred to in paragraph 64 of the contested decision and recalled in paragraph 87 above, the overlap between the marks at issue in a weakly distinctive element should not normally lead to the existence of a likelihood of confusion. It must be held, as EUIPO contends, that this applies even if the other elements of those marks have a distinctiveness that is as weak as their common element.

114 In the present case, despite the fact that the marks at issue overlap in the weak element ‘king’, there are notable differences in the overall impression given by those marks. The relevant public will easily perceive that the earlier mark is composed of the possessive form of the noun ‘king’ in the genitive and will perceive it as a whole as being the indicator of the commercial origin of the applicant’s goods, whereas the mark applied for does not include that possessive form with the apostrophe and the letter ‘s’.

115 In addition, it is necessary to reject the applicant’s argument that, even if it were regarded as weak, the word ‘king’ would still be the dominant element of the mark applied for. It must be recalled, as observed in paragraphs 37 and 41 above, that the word ‘king’ does not constitute the dominant element of that mark to the point of making the other elements of that mark secondary. It is precisely in the combination of all its elements, including the logical unit formed by the terms ‘king’ and ‘aroma’, meaning ‘king of aroma’, and the figurative element in the shape of a crown, that the distinctive character of the mark applied for lies.

116 Because of the different overall impression given by the marks as a result of the additional word and figurative elements, which have no counterparts in the earlier mark and which are no less distinctive than the word element ‘king’, that weakly distinctive element in the mark applied for is not likely to create confusion or bring to mind an association with the applicant (see, to that effect, judgment of 26 June 2018, Deutsche Post v EUIPO – Verbis Alfa and EasyPack (InPost), T‑537/15, not published, EU:T:2018:384, paragraph 75).

117 Consequently, in the specific circumstances of the present case, the fact that the signs at issue coincide in the laudatory and weakly distinctive element ‘king’ is not sufficient in order to conclude that there is a likelihood of confusion.

118 Lastly, as regards the applicant’s reference to previous first-instance decisions of EUIPO in which it was found that the earlier mark KING’S had more than a low degree of similarity with various marks, it must be observed that those cases are not comparable with the present case. In many of those cases, the contested marks contained the element ‘king’s’ or ‘kings’ with the letter ‘s’, or even the apostrophe as well. Moreover, the graphic representations of those marks were not the same as those of the mark applied for in the present case.

119 In any event, it should be recalled that, according to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001 as interpreted by the EU Courts and not on the basis of a previous decision-making practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).

120 The Board of Appeal did not therefore make an error of assessment when, in essence, it took into consideration the weak distinctiveness of the common element ‘king’ in the global assessment of the likelihood of confusion between the marks at issue.

122 By the fifth complaint, alleging a failure to take into account the very high degree of enhanced distinctiveness and the (high degree of) reputation of the earlier mark in the global assessment of the likelihood of confusion, the applicant claims that, on account of the high degree of reputation enjoyed by the earlier mark in Denmark, that mark should have been regarded as having a very strongly enhanced and very high degree of distinctiveness (see paragraph 70 above). It submits that the Board of Appeal entirely disregarded the appropriate level of protection of the earlier mark and, as a result, incorrectly assessed the relevant factors and the principle of interdependence in the context of the global assessment of the likelihood of confusion by means of an ‘entirely nonsensical and circular’ conclusion. Essentially, the Board of Appeal provided no reason for excluding a likelihood of confusion other than the weak distinctiveness of the earlier mark and of the element ‘king’, and failed to take into account the very strongly enhanced distinctiveness and the (high degree of) reputation of the earlier mark. The applicant concludes that, taking into account the similarity of the signs, the identity and similarity of the goods and services and the principles of interdependence and of imperfect recollection, as well as the fact that the earlier mark has very strongly enhanced distinctiveness (and a high degree of reputation), the Board of Appeal should have found that there was a likelihood of confusion, direct or indirect, in the present case.

123 In that regard, it must be borne in mind that, in the present case, given that the earlier mark has only a low degree of inherent distinctiveness, the recognition which it enjoys with the relevant public in Denmark has afforded it a normal or average degree of distinctiveness through its use, but is not necessarily sufficient for it to be regarded as highly distinctive for the purpose of assessing the ground of opposition set out in Article 8(1)(b) of Regulation 2017/1001. Consequently, the distinctiveness of that mark must be considered to be enhanced to an average – but not high – degree in respect of cigarettes, tobacco and tobacco products (see paragraphs 80 and 81 above).

124 The Board of Appeal was therefore correct to take into consideration the average degree of enhanced distinctiveness of the earlier mark. Since such a ‘very strongly enhanced’ and high degree of distinctiveness of the earlier mark has not been established in the present case, the Board of Appeal cannot be criticised for not taking it into account. Thus, that board did not disregard the appropriate level of protection of the earlier mark.

125 In addition, it must be observed that the enhanced distinctiveness is attributable to the earlier mark KING’S as a whole and not to its part ‘king’ which, as such, remains weakly distinctive.

126 The Board of Appeal was also correct to take into consideration the weak distinctiveness of the common element ‘king’. That said, it is clear from paragraphs 58 to 66 and 68 of the contested decision (see paragraph 83 above) that it assessed all the relevant factors, including the level of attention of the relevant public and the low degree of visual, phonetic and conceptual similarity between the signs at issue, having regard to the principle of interdependence in the context of the global assessment of the likelihood of confusion. The claim that the Board of Appeal provided no reason for excluding a likelihood of confusion other than the weak distinctiveness of the earlier mark and of the element ‘king’ therefore has no factual basis.

127 Thus, the Court has previously found that there was no likelihood of confusion on the part of the relevant public in view of the weak distinctiveness of a common element, its position at the end of the mark applied for and the resulting low degree of visual, phonetic and conceptual similarity between the signs at issue, even if the earlier mark were considered to have enhanced distinctiveness acquired through its use (see, to that effect, judgment of 5 March 2020, Exploitatiemaatschappij De Berghaaf v EUIPO – Brigade Electronics Group (CORNEREYE), T‑688/18, not published, EU:T:2020:80, paragraphs 82 and 83).

128 Lastly, contrary to what the applicant claims, it must be held that the assessments made in the judgment of 8 February 2023, Sport1 v EUIPO – SFR (SFR SPORT1) (T‑141/22, not published, EU:T:2023:55), are not applicable by analogy to the present case. In that judgment, the Board of Appeal’s decision was partially annulled, in essence, because that board, after having found that the earlier national mark had a high degree of distinctiveness acquired through use in relation to some services, had contradictorily and incorrectly found, in the context of its global assessment of the likelihood of confusion, that the distinctiveness of that earlier national mark was normal with regard to those same services (judgment of 8 February 2023, SFR SPORT1, T‑141/22, not published, EU:T:2023:55, paragraphs 40 and 41).

129 However, in the present case, there is no such contradiction. In the assessment of the distinctiveness of the earlier mark, the Board of Appeal concluded that, despite its long-standing and intensive use, that mark could be considered only to have a normal or average degree of distinctiveness and not a high degree of distinctiveness. Thus, the same degree of distinctiveness was taken into consideration in the global assessment of the likelihood of confusion in paragraphs 58 to 60 of the contested decision. Consequently, the applicant’s claim relating to the Court’s assessments in the judgment of 8 February 2023, SFR SPORT1 (T‑141/22, not published, EU:T:2023:55), must be rejected as ineffective.

130 The Board of Appeal did not therefore make an error of assessment in taking into consideration, in the global assessment of the likelihood of confusion between the marks at issue, the average degree of enhanced distinctiveness of the earlier mark and the weak distinctiveness of the common element ‘king’.

131 The fifth complaint, to the extent that it has not already been rejected in paragraph 82 above, must therefore be rejected.

132 In the light of all the foregoing considerations, it must be concluded that the Board of Appeal’s finding, in paragraphs 58 to 66 and 68 of the contested decision (see paragraph 83 above), that there is no likelihood of confusion in the present case is not vitiated by any error of law or assessment capable of leading to the annulment of that decision.

133 Therefore, the single plea in law must be rejected as being unfounded and, accordingly, the action must be dismissed in its entirety.

134 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.

135 In the present case, the intervener has applied for the applicant to be ordered to pay the costs. EUIPO has also applied for the applicant to be ordered to pay the costs, but only in the event that a hearing is held.

136 Since the applicant has been unsuccessful and a hearing has been held, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and by the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> House of Prince v EUIPO - Bialy (AROMA KING) (EU trade mark - Judgment) [2024] EUECJ T-118/23 (06 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T11823.html Cite as: ECLI:EU:T:2024:778, EU:T:2024:778, [2024] EUECJ T-118/23

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