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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

23 October 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark SeboCalm — Earlier EU word mark — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T‑441/16,

Tetra Pharm (1997) Ltd, established in Tel Aviv (Israel), represented by A. Gorzkiewicz, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and D. Stoyanova-Valchanova, acting as Agents,

defendant,

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

Sebapharma GmbH & Co. KG, established in Boppard (Germany), represented by J. Wald and D. Koal, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO dated 19 May 2016 (Case R 852/2015-1), relating to opposition proceedings between Sebapharma and Tetra Pharm (1997),

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 August 2016,

having regard to the response of the intervener lodged at the Registry of the Court on 13 October 2016,

having regard to the response of EUIPO lodged at the Court Registry on 18 October 2016,

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

gives the following

Judgment

 Background to the dispute

1        On 25 July 2013, the applicant Tetra Pharm (1997) Ltd, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        The trade mark for which registration was sought is the word sign SeboCalm.

3        After the limitation which carried out in the course of the proceedings before EUIPO, the goods for which registration is sought fall in Class 3 of the Nice Agreement Concerning the International Classification of Goods for the Purposes of the Registration of Marks, of 15 June 1957, as revised and amended, and correspond to the following description: ‘Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery products; Ethereal oil; Cosmetics; Hair and body lotions; Cosmetics containing herbal supplements; Cosmetic preparations for face and body care; Foaming bath gels; Shampoos; Hair conditioner; Skin care creams; Gel; Creams for hydrating the skin; Bath salts; Talcum powder, for toilet use; Toiletries, other than for medical purposes; After-shave lotions; Make-up preparations; Deodorants for personal care’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 204/2013 of 25 October 2013.

5        On 20 January 2013, the intervener, Sebapharma GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was founded on the earlier EU word mark Sebotherm, filed on 16 July 2012 and registered on 10 May 2013 under No 11045151, inter alia, for the goods in class 3 and corresponding to the following description:

‘Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Scouring solutions; Make-up removing preparations; Astringents for cosmetic purposes; Alum stones [astringents]; Aloe vera preparations for cosmetic purposes; Amber [perfume]; Anti-static preparations for household purposes; Antiperspirants [toiletries]; Aromatics [essential oils]; Flavorings for beverages [essential oils]; Breath freshening strips; Breath freshening sprays; Ethereal essences; Ethereal oils; Cedarwood (Essential oils of -); Eyebrow cosmetics; Eyebrow pencils; Soap for brightening textile; Cake flavourings [essential oils]; Bath salts, not for medical purposes; Baths (Cosmetic preparations for -); Balms other than for medical purposes; Beard dyes; Mustache wax; Bergamot oil; Pumice stone; Skin whitening creams; Bleaching preparations [decolorants] for cosmetic purposes; Laundry bleach; Bleaching salts; Bleaching soda; Extracts of flowers [perfumes]; Polish for furniture and flooring; Floor wax; Deodorants for pets; Deodorants for human beings or for animals; Disinfectant soap; Deodorant soap; Detergents other than for use in manufacturing operations and for medical purposes; Diamantine [abrasive]; Canned pressurized air for cleaning and dusting purposes; Scented wood; Sachets for perfuming linen; Scented water; Javelle water; Depilatories; Wax (Depilatory -); Scale removing preparations for household purposes; Color-brightening chemicals for household purposes [laundry]; Laundry blueing; Colorants for toilet purposes; Paint stripping preparations; Color-removing preparations; Dyes (Cosmetic -); Greases for cosmetic purposes; Degreasers other than for use in manufacturing processes; Varnish-removing preparations; Stain removers; Gaultheria oil; Geraniol; Shining preparations [polish]; Laundry glaze; Starch glaze for laundry purposes; Glass cloth; Smoothing preparations [starching]; Smoothing stones; Flower perfumes (Bases for -); Hair dyes; Hair spray; Hair lotions; Creams (Cosmetic -); Skin care (Cosmetic preparations for -); Heliotropine; Ionone [perfumery]; Jasmine oil; Adhesives for affixing false hair; Adhesives for cosmetic purposes; Eyelashes (Adhesives for affixing false -); Eau de Cologne; Corundum [abrasive]; Cosmetics; Cosmetic kits; Pencils (Cosmetic -); Cleaning chalk; False nails; False eyelashes; Lacquer-removing preparations; Lavender oil; Lavender water; Leather bleaching preparations; Waxes for leather; Leather preservatives [polishes]; Lip glosses; Lipsticks; Floor wax removers [scouring preparations]; Lotions for cosmetic purposes; Air fragrancing preparations; Almond milk for cosmetic purposes; Almond oil; Almond soap; Massage gels other than for medical purposes; Medicated soap; Carbides of metal [abrasives]; Cloths impregnated with a detergent for cleaning; Unblocking drain pipes (Preparations for -); Leaves of plants (Preparations to make shiny the -); Douching preparations for personal sanitary or deodorant purposes [toiletries]; Musk [perfumery]; Mouth washes, not for medical purposes; Nail art stickers; Nail polish; Nail care preparations; Washing soda, for cleaning; Soda lye; Neutralizers for permanent waving; Oils for toilet purposes; Oils for cosmetic purposes; Oils for cleaning purposes; Hair waving preparations; Oils for perfumes and scents; Perfumery; Perfumes; Pastes for razor strops; Mint for perfumery; Mint essence [essential oil]; Polishing creams; Polishing preparations; Denture polishes; Polishing paper; Polishing rouge; Polishing stones; Polishing wax; Pomades for cosmetic purposes; Potpourris [fragrances]; Dry-cleaning preparations; Furbishing preparations; Quillaia bark for washing; Shaving preparations; Shaving soap; Shaving stones [astringents]; After-shave lotions; Fumigation preparations [perfumes]; Joss sticks; Windscreen cleaning liquids; Cleansing milk for toilet purposes; Cleaning preparations; Cleaning dentures (Preparations for -); Rose oil; Rust removing preparations; Non-slipping liquids for floors; Non-slipping wax for floors; Safrol; Ammonia [volatile alkali] detergent; Sandpaper; Whiting; Cosmetic preparations for slimming purposes; Grinding preparations; Abrasive paper; Abrasives; Make-up; Make-up preparations; Make-up powder; Emery; Emery cloth; Emery paper; Sand cloth; Tailors’ wax; Beauty masks; Boot cream; Shoe wax; Cobblers’ wax; Shoemakers’ wax; Antiperspirant soap; Soaps; Soap for foot perspiration; Shampoos; Silicon carbide [abrasive]; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Laundry starch; Badian essence; Talcum powder, for toilet use; Wallpaper cleaning preparations; Terpenes [essential oils]; Turpentine, for degreasing; Oil of turpentine for degreasing; Cosmetics for animals; Shampoos for pets; Toiletries; Cakes of toilet soap; Toilet water; Tripoli stone for polishing; Dry shampoos; Drying agents for dishwashing machines; Tissues impregnated with cosmetic lotions; Petroleum jelly for cosmetic purposes; Volcanic ash for cleaning; Laundry wax; Bluing for laundry; Laundry soaking preparations; Laundry preparations; Hydrogen peroxide for cosmetic purposes; Cotton wool for cosmetic purposes; Cotton sticks for cosmetic purposes; Fabric softeners for laundry use; Incense; Eyelashes (Cosmetic preparations for -); Mascara; Dental bleaching gels; Dentifrices; Transfers (Decorative -) for cosmetic purposes; Lemon (Essential oils of -); Shampoos; Oils for cosmetic purposes; Cosmetic preparations for cleaning and care of skin, hair, lips; Cosmetic skincare preparations for external use; Tissues impregnated with cosmetic lotions; Baby-care and childcare goods, namely washing articles, foam baths, care baths, skin creams, skin care oils, oil wipes, wet wipes, shampoos, powders and creams; Oil wipes and wet wipes being cosmetics; Body care and cleansing products; Face lotions, facial cleansing and care preparations and substances in liquid and solid form, in the form of foam, lotions, creams and gels, aqueous or alcohol-based solutions; Antibacterial and anti-spot facial cleansing and care preparations for cosmetic purposes; Personal deodorants; Bath foam; Bath oils; Bath additives for cosmetic purposes; Bath extracts based on medicinal plants and/or herbs for cosmetic purposes; Foot care products; Sun-tanning and skincare preparations in the form of lotions, creams and gels, after sun skin balms, after sun sprays; Sun-tanning preparations (cosmetics); Cosmetic preparations for slimming purposes; Antiperspirants (toiletry preparations) and deodorants; Non medicated bath salts; Cosmetics without any medically active substances; Cosmetic preparations for baths.)’

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

8        On 11 March 2015, the Opposition Division upheld the opposition and dismissed the trade mark application in its entirety on the ground that there was a likelihood of confusion between the conflicting signs.

9        On 29 April 2015, the appellant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

10      By decision of 19 May 2016 (‘the contested decision’), the First Board of Appeal dismissed the appeal. In particular, first, the Board of Appeal held that in the present case the relevant territory was the European Union. Second, the Board of Appeal confirmed the findings of the Opposition Division that ‘for reasons of procedural economy’ only the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public was to be taken into account, since it was sufficient to refuse the registration of a mark that an absolute ground for refusal, within the meaning of Article 8(1)(b) of Regulation No 207/2009, exists in part of the EU. Third, the Board of Appeal noted that, taking account of the goods concerned, the relevant public was composed of the average consumer with an average level of attention. Fourth, the Board of Appeal upheld the findings of the Opposition Division according to which the goods covered by the mark applied for were identical to those protected by the earlier mark. Fifth, the Board of Appeal made a comparison of the conflicting signs. First of all, it held essentially that the conflicting signs had an ‘overall visual similarity to an average degree’. First, the conflicting signs had the same first four letters, ‘s’, ‘e’, ‘b’ and ‘o’ and the same last letter ‘m’, also their length was almost identical. Second, the first part the conflicting signs, which was identical, was the part most likely to attract the attention of the public. Third, the different letters placed in less prominent positions were not sufficient to offset the similarity of the conflicting signs. Next, the Board of Appeal held essentially that the conflicting signs had ‘overall phonetic similarity to an average degree’. On one hand, their shared syllables ‘se’ and ‘bo’ and the same last letter ‘m’, placed at the beginning and end of the conflicting signs respectively, were sufficient to establish such similarity. On the other hand, the presence of the syllables ‘calm’ and ‘therm’ at the end of the conflicting signs lacked any particular meaning for the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public. The Board of Appeal added that, even if it were possible that professionals in the field of dermatology regard the conflicting signs as being conceptually similar, since the term ‘sebo’ refers to ‘seborrhoea’, a skin complaint, or ‘sebum’, the oil produced by the skin, by contrast, average consumers would probably not attach any meaning to that word. Furthermore, the conflicting signs convey a concept only to consumers who understand the basic English words ‘calm’ and ‘therm’. Therefore, the Board of Appeal held that ‘overall’, the conflicting signs were ‘similar to an average degree’. Sixth, the Board of Appeal held that a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009 could not be excluded since the goods at issue were identical and overall the signs were phonetically and visually similar. Furthermore, given that the conflicting signs had the same structure and that part of the relevant public does not necessarily understand their meaning, the Board of Appeal observed that the relevant public might perceive an association between the conflicting signs and believe that the mark applied for was part of the same product range as the earlier mark and that it was marketed by the proprietor of that mark or by an economically linked undertaking.

  Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

12      The Commission and the intervener contend that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant relies essentially on a single plea based on the infringement of Article 8(1)(b) in conjunction with Article 7(2) and Articles 75 and 76(1) of Regulation No 207/2009 (now Article 8(1)(b), Article 7(2) and Articles 94 and 93 of Regulation 2017/1001).

14      By that plea the applicant argues essentially that, first, the Board of Appeal incorrectly limited the comparison of the conflicting signs to the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public, and, second, it was wrong to hold that there was a likelihood of confusion between the conflicting signs.

15      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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.

16      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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 26 June 2014, Basic v OHIM — Repsol YPF (basic), T‑372/11, EU:T:2014:585, paragraph 21 and the case-law cited).

17      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 26 June 2014, basic, T‑372/11, EU:T:2014:585, paragraph 22 and the case-law cited).

18      It is in the light of those considerations that the possible infringement by the Board of Appeal of Article 8(1) in conjunction with Article 7(2) and Articles 75 and 76(1) of Regulation No 207/2009 must be examined.

 The relevant public and its level of attention

19      In paragraphs 12 and 13 of the contested decision, the Board of Appeal held essentially, first, that the relevant territory was that of the European Union and, second, that the relevant public for the goods concerned was composed of the average consumer.

20      Those findings, which are not challenged by the applicant, are free of error and must be upheld.

21      Furthermore, in paragraph 12 of the contested decision, the Board of Appeal confirmed the decision of the Opposition Division, according to which ‘for reasons of procedural economy’ the comparison between the conflicting signs would be limited to the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public.

22      In that connection, the applicant claims that the Board of Appeal’s decision to limit its assessment to the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public is arbitrary with regard to the conflicting signs which contain English words, is a breach of the duty to state reasons and has a negative impact on the results of the comparison between the conflicting signs.

23      EUIPO, supported by the intervener, argues essentially that the Board of Appeal rightly decided to limit the comparison of the conflicting signs to the Slovak-, Bulgarian- and Estonian-speaking part of the relevant public. First, the Board of Appeal based its assessment on the elements and reasons that the parties had the opportunity to discuss and second, the argument that the Board of Appeal arbitrarily excluding the English-speaking public cannot be accepted taking account of the unitary character of EU trade marks and the settled case-law, according to which it suffices that likelihood of confusion is found in respect of the relevant public in a part of the European Union. The intervener adds that, even if the comparison had been focussed on the English-speaking public, the result of the comparison would still be same, that the conflicting signs are similar.

24      It must be recalled that where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it follows from the unitary character of the EU trade mark laid down in Article 1(2) of Regulation No 207/2009 that an earlier EU trade mark is protected in the same way in all Member States, and may therefore be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the Union. It follows that the principle laid down in Article 7(2) of Regulation No 207/2009 (now Article 1(2) of Regulation 2017/1001), according to which it suffices, in order for registration of a trade mark to be refused, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) thereof (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraph 57; see also judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapnaeca (VENADO with frame and others), T‑81/03, T‑82/03 and T-l03/03, EU:T:2006:397, paragraph 76 and the case-law cited).

25      It should be borne in mind, in accordance with Article 75 of Regulation No 207/2009, that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law. The question of whether a statement of reasons satisfies those requirements must be assessed with reference not only to its wording, but also to its context and the whole body of legal rules governing the matter in question (see judgment of 8 June 2016, Monster Energy v EUIPO (Representation of a peace symbol), T‑583/15, EU:T:2016:338, paragraph 33 and the case-law cited).

26      As regards the decision of the Board of Appeal to limit its assessment to the Slovak-, Bulgarian and Estonian speaking part of the relevant public, it must be held that the contested decision cannot be in breach of the duty to state reasons on that matter. As is clear from paragraphs 4 and 12 of the contested decision, the Board of Appeal confirmed the ground relied on by the Opposition Division relating to ‘reasons of procedural economy’. Second, the Board of Appeal supported its decision relying on the principle according to which it is sufficient that the relative ground of refusal exists only in part of the Union in order to refuse registration of a mark.

27      Furthermore, as the applicant states, it is true that the relevant public was limited to non-English speaking consumers, even though the two conflicting signs contain English words. However, the fact remains that that limitation cannot be arbitrary in the light of the principle that it is sufficient that a relative ground of refusal exists only in part of the Union in order to refuse the registration of a mark. Therefore, the argument that that limitation has a negative impact on the results of the comparison between the conflicting signs must be dismissed.

28      As regards the degree of attention of the relevant public the Board of Appeal held, in paragraph 13 of the contested decision, that the goods at issue were in the cleaning and personal care sector and, therefore, were intended essentially for the average consumer with an average degree of attention.

29      The applicant challenges that assessment, claiming that the goods at issue are intended for persons suffering from skin problems and, therefore, they have an enhanced level of attention.

30      EUIPO submits that the goods in question, being relatively inexpensive everyday consumer goods, are aimed at the average consumer who does not show an enhanced level of attention even if he suffers from skin problems.

31      It must be recalled that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

32      It must also be recalled that, with regard to the assessment of the likelihood of confusion, the public having the lowest level of attention must be taken into consideration (see, to that effect, judgment of 26 March 2015, Emsibeth v OHIM — Peek & Cloppenberg (Nael), T‑596/13, not published, EU:T:2015:193, paragraph 29 and the case-law cited).

33      Furthermore, without being weak, the level of attention of the average consumer for cosmetics and personal care products, which are everyday goods, is less than that for durable goods or simple goods and services of higher value or with an exceptional use (see judgment of 7 November 2013, Three-N-Products v OHIM — Munindra (AYUR), T‑63/13, not published, EU:T:2013:583, paragraph 20 and the case-law cited).

34      In the present case, it is common ground that the goods at issue fall in Class 3 and belong to the cleaning and personal care sector.

35      The level of attention of the relevant public for those goods cannot be regarded as high. The goods at issue, having regard to their nature and low price, are everyday goods for the general public having an average level of attention. Contrary to the applicant’s submissions, even if some consumers of those goods might be more attentive at the time of their purchase on account of their skin problems, the fact remains that that is not the case for all consumers. Furthermore, the goods covered by the mark applied for are not limited to skin care products, but also include other goods such as toothpaste and cleaning products. For those products, the applicant does not put forward any argument supporting a high level of attention on the part of the relevant public.

36      Therefore, in order to assess the likelihood of confusion, the Board of Appeal rightly took into consideration the general public with an average degree of attention.

 Comparison of the goods

37      In paragraph 14 of the contested decision, the Board of Appeal held that all the goods covered by the mark applied for were similar to those for which the earlier mark was protected. That assessment by the Board of Appeal which, moreover, is not challenged by the applicant, is correct and must be accepted.

 Comparison of the signs

38      According to case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (ee judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and case-law cited).

39      In the present case, the marks to be compared are the word mark applied for SeboCalm and the earlier word mark Sebotherm.

 The visual similarity

40      The Board of Appeal held, in paragraph 20 of the contested decision, that there was an ‘average degree of visual similarity’ between the conflicting marks. First of all, the first four letters of the signs at issue ‘s’, ‘e’, ‘b’ and ‘o’ were the same as well as the last letter ‘m’, and the length was almost identical. Next, the first part, which was shared by the signs at issue, was the part which is most likely to attract the public’s attention. Finally, the letters which were not the same, placed in less noticeable positions, were insufficient to offset the similarity of the signs at issue.

41      The applicant challenges that assessment. First, the applicant claims that the element ‘sebo’, despite its position at the beginning of the signs at issue, is no longer likely to attract the attention of the public, given its descriptive character and that it has a weak distinctive character with regard to cosmetics in Class 3. The element ‘sebo’ is often used in the cosmetic sector and is understood by the relevant public, include non-English-speaking, as relating to ‘seborrhoea’ a common skin disorder. Furthermore, the applicant claims to have submitted evidence from internet sites accessible in Slovakia, Bulgaria and Estonia, on which cosmetics bearing trade marks containing the element ‘sebo’ could also be bought, showing that consumers in those countries were familiar with that term. Moreover, there are more than two hundred registered trade marks containing the element ‘sebo’, which supports the finding that ‘sebo’ is not distinctive for consumers with regard to cosmetic products. Second, the applicant submits that the Board of Appeal wrongly concluded that the conflicting signs have a structure that is visually similar. Due to the incorporation of capital letter ‘C’, the sign ‘SeboCalm is composed of two words: ‘sebo’ and ‘calm’, whereas the sign Sebotherm will be perceived as a single word. Third, the applicant submits that the Board of Appeal failed to take account of the fact that the elements ‘calm’ and ‘therm’ contain different letters.

42      EUIPO, supported by the intervener, disputes the applicants’ arguments. First of all, the applicant submits that average consumers do not refer to common problems such as ‘oily skin’ or ‘dandruff’ using the Latin term ‘seborrhoea’, the meaning of which they are unaware. Second, the file does not contain any evidence that the public associates the term ‘sebo’ with a skin disorder or that ‘sebo’ is a term largely used for cosmetic products and, therefore, that it has become familiar for consumers speaking Slovak, Bulgarian and Estonian. The images on internet sites submitted by the applicant in the proceedings before the Board of Appeal do not lead to any conclusions regarding the perception of the Bulgarian-, Slovak- or Estonian-speaking public. Third, the existence of trade mark registrations relating to signs including the term ‘sebo’ cannot automatically lead to the conclusion that the relevant consumers have been exposed to widespread use of those marks and that they have become accustomed to such trade marks. Fourth, it should be born in mind that the conflicting signs not only designate skin care products, but also bleaching preparations and toothpaste. Next, EUIPO argues, on one hand, that the relevant public does not understand the meaning of ‘sebo’ and, on the other hand, that any specific graphic or stylistic elements are irrelevant for the assessment of a word mark such as that in the present case. Finally, EUIPO submits that the Board of Appeal took into consideration the differing letters present in the conflicting signs but held that, due to their less prominent position, they were insufficient to counteract the overall visual similarity.

43      In the present case, it is common ground that the signs Sebotherm and SeboCalm are composed of eight and nine letters respectively, the first four letters of which ‘s’, ‘e’, ‘b’ and ‘o’ and the final letter ‘m’ are the same. Furthermore, they differ from each other by their middle part made up, in the case of the earlier mark, by the four letters ‘t’, ‘h’, ‘e’ and ‘r’ and in the case of the mark applied for, by the three letters ‘c’, ‘a’ and ‘l’.

44      It follows, that the conflicting signs are almost identical in length and that they have the same first four letters and the same last letter.

45      In those circumstances, as the Board of Appeal held, the different letters in the middle of the conflicting signs are insufficient to offset the similarity conferred by the common letters at the beginning and end of those signs.

46      That finding cannot be called into question by the various arguments put forward by the applicant.

47      First, it must be observed, as EUIPO rightly argued, that the differences between the lower and upper case typeface in the conflicting signs, in this case the capital letter ‘C’ in the middle part of the mark applied for, have no effect as the protection which derives from the registration of a word mark concerns the word in the application for registration and not the specific graphic or stylistic aspects that that mark may have (see judgment of 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 41 and the case-law cited). Thus, the assessment of the visual similarity between the conflicting signs must take account, in particular, as regards word marks of their length, the letters they are composed of and the order of those letters (see judgment of 29 February 2012, Azienda Agricola Colsaliz di Faganello Antonio v OHIM — Weinkelleri Lenz Moser (SERVO SUO), T‑525/10, not published, EU:T:2012:96, paragraph 41 and the case-law cited).

48      Second, the findings of the Board of Appeal, that the initial part of the conflicting signs is the part most likely to attract the attention of the public, must be accepted.

49      On one hand, it must be recalled that, according to settled case-law, as regards a mark containing word elements, consumers generally pay more attention to the beginning of a trade mark than its end (see judgment of 28 March 2017, Regent University v EUIPO — Regent’s College (REGENT UNIVERSITY), T‑538/15, not published, EU:T:2017:226, paragraph 53 and the case-law cited).

50      On the other hand, in the present case, there are no special circumstances with regard to the conflicting signs justifying an exception to that rule. Contrary to the applicant’s claims, the word ‘sebo’ cannot be regarded as having a weak distinctive character and, therefore, be unlikely to attract the attention of the public when assessing the visual similarity of the conflicting signs.

51      It is true that the word ‘sebo’ (from the Latin ‘sebum’, ‘sebum’ in English, corresponding to the abbreviation for ‘seborrhoea’, a common skin complaint) is used in dermatology and in the cosmetic sector, as evidenced by the many EU trade marks registered for this type of products including the word ’sebo’. However, as observed by EUIPO and the intervener, the use of the word ‘sebo’ for cosmetic products does not constitute sufficient evidence to support the conclusion that consumers in the EU, including those speaking Slovak, Bulgarian and Estonian, are accustomed to that word. Moreover, in the present case, the applicant has not established that the marks using the word ‘sebo’ were marketed in Slovakia, in Bulgaria or in Estonia, nor that there were internet sites marketing those trade marks in those languages.

52      Therefore, the word ‘sebo’, even if it is not exclusive to the terminology used by dermatologists or doctors, cannot be regarded as a common word to which the general public is normally exposed. It follows that the word ‘sebo’ cannot be regarded as descriptive for the relevant public and, conversely, is likely to attract more of its attention when assessing the visual similarity of the conflicting signs, taking account of its position at the beginning of those signs.

53      That conclusion is supported by the fact that the conflicting signs do not designate only skin care products but also cover other goods which cannot be classified as cosmetic products, such as toothpaste or cleaning products, with which the word ‘sebo’ has no specific relationship.

54      Third, it must be held, as follows from paragraph 20 of the contested decision, that EUIPO took into consideration the different letters in the conflicting signs but concluded that, given their less prominent position in the middle of the signs, they were insufficient to offset their overall visual similarity. That conclusion must be upheld. Contrary to the applicant’s arguments, the different elements, ‘ther’ and ‘cal’, do not occupy a visually dominant position in the conflicting signs.

55       In light of all of those considerations, it must be held that the elements of dissimilarity in the conflicting signs are not sufficient to dispel the impression on the part of the relevant public that those signs are visually similar. Therefore, the Board of Appeal rightly held that the conflicting signs had an average degree of visual similarity.

 The phonetic similarity

56      The Board of Appeal held essentially, in paragraph 21 of the contested decision, that the conflicting signs had ‘an overall visual similarity to an average degree’. First, their shared syllables ‘se’ and ‘bo’ and the same last letter ‘m’, placed at the beginning and end of the word respectively and the fact that their length is almost identical, was sufficient to establish their similarity. Second, the presence of the syllables ‘calm’ and ‘therm’ at the end of the conflicting signs did not reduce that similarity.

57      The applicant criticises the Board of Appeal, on one hand, for failing to analyse the ‘likely’ pronunciation of ‘cal’ and ‘ther’ (and ‘calm’ and ‘therm’) by consumers in the relevant territory before concluding that the pronunciation of the marks at issue in Slovakia, Estonia and Bulgaria would be similar to an average degree. On the other hand, it argues that the same pronunciation of the common element ‘sebo’ is not sufficent to make those marks phonetically similar, taking account of the clearly different pronunciation of ‘calm’ and ‘therm’. In any event, the degree of phonetic similarity between the conflicting marks is of less importance in the case of goods which are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark.

58      EUIPO, supported by the intervener, argues essentially that the two marks, which have the same number of syllables, had a common rhythm and intonation. However, the differences in the pronunciation of the signs are confined in their middle parts, which would not substantially change their overall phonetic impression.

59      As a preliminary point, it must be recalled that consumers are faced both visually and phonetically with the marks designating the goods at issue. There is no factor which makes it possible to attribute a preponderant weight to the visual aspect or, conversely, to the phonetic aspect in the overall assessment of the likelihood of confusion. In certain cases, those goods are sold by means of self-service in commercial establishments by being placed on shelves where they may be examined by consumers. In other cases, they are kept in a place which is not directly accessible to the public and purchases are made with the assistance of a professional and involve a verbal reference to the marks concerned (see, to that effect, judgment of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 65).

60      In the present case, it must be held that the conflicting signs are composed of three syllables, the first two of which are shared, ‘se’ and ‘bo’, and the last syllable is different, ‘therm’ and ‘calm’, except for the last letter which is also the same in both.

61      It must also be recalled, as mentioned in paragraphs 48 to 53 above, that consumers generally pay more attention to the beginning of a trade mark. In the present case the identical pronunciation of the two first syllables of the conflicting signs thus constitutes a sufficient indication of their phonetic similarity, which is not offset by the different pronunciation of their last syllable.

62      Therefore, the Board of Appeal rightly held that the conflicting signs had an average degree of similarity.

 Conceptual similarity

63      The Board of Appeal held, in paragraphs 22 to 24 of the contested decision, that, conceptually, the conflicting signs had no specific meaning for the relevant Slovak-, Bulgarian- and Estonian-speaking public. The Board of Appeal added that, even if it were possible that dermatologists may find the conflicting signs to be similar conceptually, since ‘sebo’ refers to ‘seborrhoea’, a skin complaint, or to ‘sebum’, the oil produced by the skin, average consumers are unlikely to attach any significance to that term. Additionally, the conflicting signs do not convey any concept for consumers who do not understand the basic English words ‘calm’ and ‘therm’.

64      The applicant submits that EUIPO committed an error in the conceptual comparison of the conflicting signs. In that connection, it submits that SeboCalm will be understood by the relevant public as designating a product calming ‘seborrhoea’. On one hand, the relevant public is accustomed to using the word ‘sebo’ to designate that skin condition. On the other hand, since the word ‘calm’ is a basic English word, it will be understood in all the Member States, even on the relevant territory.

65      EUIPO, supported by the intervener, claims that the conflicting signs do not convey any specific meaning for the relevant Slovak-, Bulgarian- and Estonian-speaking public. EUIPO states that the word ‘calm’ does not exist in Slovak, Bulgarian or Estonian and that the applicant has not submitted any evidence establishing that English is understood by a majority of the relevant consumers. The intervener adds that, even if the relevant public were able to understand the mark applied for as a product ‘calming seborrhoea’, the fact remains that the conflicting signs are conceptually similar since they both refer to a skin disorder.

66      In that connection, it must be recalled that according to settled case-law, when the relevant public does not understand the meaning of the words of which marks are composed, it is impossible to make a conceptual comparison (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM — Italiana Cazature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 180).

67      In the present case, it must be held, as EUIPO argued, that there is insufficient evidence in the file to conclude that the average Slovak-, Bulgarian- or Estonian-speaking consumer is able to understand the meaning of a word derived from Latin ‘sebo’ and the English words ‘calm’ and ‘therm’. While it is true that such consumers are already exposed to the use of the word ‘sebo’ for skincare products, that still does not mean that they are able to understand the precise meaning. Similarly, those consumers are not able to understand the precise meaning of ‘calm’ and ‘therm’, although they may perceive that those words are different.

68      Therefore, the Board of Appeal rightly held that the conflicting signs did not have a specific meaning for the relevant public and, therefore, that it was impossible to make a conceptual comparison.

69      In the light of the foregoing, given the visual and phonetic similarity between the conflicting signs is average and the fact that it is impossible to make a conceptual comparison as is clear from paragraphs 55, 62 and 68 above, the Board of Appeal rightly held, in paragraph 25 of the contested decision, that ‘overall’ the conflicting signs ‘are similar to an average degree’.

 The likelihood of confusion

70      The Board of Appeal held in paragraphs 28, 30 and 31 of the contested decision, first, that the inherent distinctive character of the earlier mark was average. Next, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, could not be excluded given that the products at issue were identical and that the signs were similar overall with regard to the phonetic and visual aspects. Finally, taking account of the fact that the conflicting signs had the same structure, and that part of the relevant public did not necessarily understand their meaning, the Board of Appeal held that the relevant public might perceive an association between the conflicting signs and believe that the mark applied for is part of the same range of products as those of the earlier mark and that they were marketed by its proprietor or by an economically linked undertaking.

71      The applicant submits that EUIPO incorrectly analysed the likelihood of confusion between the conflicting signs. First, the Board of Appeal did not take account of the fact that the relevant public, which is composed of the general public, has a high level of attention. Second, given that the common element ‘sebo’ had a weak distinctive character for cosmetic products, the difference between the elements ‘calm’ and ‘therm’ is sufficient to exclude the likelihood of confusion in the mind of the consumer. Third, the sign SeboCalm is conceptually different from the earlier mark, since consumers understand it as designating a product calming the skin and will associate it with treatment for sensitive skins.

72      EUIPO, supported by the intervener, claims that there is a likelihood of confusion on the part of the relevant average Slovak-, Bulgarian- or Estonian-speaking consumers, including a likelihood of association between the marks at issue, taking account, in particular, of the fact that the products are identical, the overall similarity of the signs, the average level of attention of the relevant public and the average distinctive character of the earlier mark.

73      In that regard, it must be borne in mind that 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 lesser degree of similarity between the goods or services designated may be offset by a greater degree of similarity between the trade marks and vice versa (see judgment of 21 June 2012, Kavaklidere-Europe v OHIM — Yakult Honsha (Yakut), T‑276/09, not published, EU:T:2012:313, paragraph 52 and the case-law cited).

74      In the assessment of the likelihood of confusion, it should be observed that the differences between the signs in question are sufficient to rule out any likelihood of confusion in the perception of the target public. Such a likelihood would presuppose that both the degree of similarity of the trade marks in question and that of the goods or services designated by those marks were sufficiently high (see judgment of 27 October 2006, Les Éditions Albert René v OHIM — (MOBILIX), T‑336/03, paragraph 82 and the case-law cited).

75      Furthermore, the assessment of the Board of Appeal that the inherent distinctive character of the earlier mark is of an average degree, which moreover is not challenged by the applicant, must be upheld.

76      In the present case, taking account of the similarity of the products at issue (see paragraph 37 above), the average degree of visual and phonetic similarity of the conflicting signs (see paragraphs 55 and 63 above), the lack of meaning of the conflicting signs for part of the relevant public (see paragraph 69 above) and the average degree of inherent character of the earlier mark (see paragraph 75 above), the Board of Appeal rightly held that it was clear from an overall assessment of the conflicting signs that there was a likelihood that part of the relevant public would believe that the products at issue are from the same undertaking or from economically-linked undertakings.

77      In the light of the foregoing, the applicant’s single plea, based on an infringement of Article 8(1)(b) together with Article 7(2) and Articles 75 and 76(1) of Regulation No 207/2009, must be rejected as unfounded and, therefore, the action must be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Tetra Pharm (1997) Ltd to pay the costs.

Delivered in open court in Luxembourg on 23 October 2017.

*      Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.