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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

2 February 2022 (*)

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

In Case T‑694/20,

Maria Alexandra Canisius, residing in Vienna (Austria), represented by H. Asenbauer, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and D. Hanf, acting as Agents,

defendant,

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

Beiersdorf AG, established in Hamburg (Germany), represented by J. Fuhrmann and V. von Bomhard, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 September 2020 (Case R 2233/2019-4), relating to opposition proceedings between Beiersdorf and Ms Canisius,

THE GENERAL COURT (Ninth Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 18 November 2020,

having regard to the response of EUIPO lodged at the Court Registry on 25 February 2021,

having regard to the response of the intervener lodged at the Court Registry on 5 March 2021,

having regard to the reassignment of the case to the Ninth Chamber and to a new Judge-Rapporteur,

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

gives the following

Judgment

 Background to the dispute

1        On 12 December 2017, the applicant, Ms Maria Alexandra Canisius, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Classes 3, 16 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

–        Class 3: ‘Toiletries; cleaning and fragrancing preparations; nail varnish; cosmetics; make-up’;

–        Class 16: ‘Paper tissues for cosmetic use’;

–        Class 25: ‘Clothing’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 9/2018 of 15 January 2018.

5        On 13 April 2018, the intervener, Beiersdorf AG, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.

6        The opposition was based on, inter alia, the earlier EU word mark LABELLO, which was registered on 3 August 1998 under the number 15 750 in respect of goods in Class 3 corresponding to the following description: ‘Cosmetic preparations’. Furthermore, the intervener claimed that the earlier mark had a reputation in, inter alia, Germany, Italy and the Netherlands.

7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation 2017/1001 and Article 8(5) of that regulation.

8        By decision of 2 August 2019, the Opposition Division upheld the opposition based on Article 8(5) of Regulation 2017/1001 and rejected the EU trade mark application in its entirety.

9        On 1 October 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 16 September 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO partially upheld the appeal and annulled the Opposition Division’s decision as regards the goods in Class 25. First, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the goods in Classes 3 and 16 covered by the mark applied for. Secondly, as regards the clothing in Class 25 covered by that mark, it found that there was no likelihood of confusion, within the meaning of that provision, in the present case and that the conditions for the application of Article 8(5) of that regulation were also not satisfied.

 Forms of order sought

11      The applicant claims that the Court should:

–        partially annul the contested decision in so far as the opposition was upheld in respect of the goods in Classes 3 and 16 covered by the mark applied for and the appeal was dismissed;

–        order EUIPO and the intervener to pay the costs;

–        reject the opposition brought by the intervener against the application for registration, order EUIPO to allow that application to proceed to registration in relation to the goods in Classes 3, 16 and 25 and order the intervener to pay the costs and fees incurred in the course of the opposition proceedings before EUIPO.

12      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of the action, the applicant relies, in essence, on two pleas in law, alleging (i) infringement of Article 8(1)(b) of Regulation 2017/1001 and (ii) infringement of Article 8(5) of that regulation. It is appropriate to begin by examining the second plea.

 The second plea, alleging infringement of Article 8(5) of Regulation 2017/1001

14      In the context of the second plea, the applicant puts forward arguments relating to the inapplicability of Article 8(5) of Regulation 2017/1001. In that regard, it must be deduced from the wording of her first and third heads of claim that those arguments relate to the goods in Classes 3 and 16 covered by the mark applied for.

15      However, it is apparent from paragraphs 43 to 56 of the contested decision that the Board of Appeal examined the applicability of Article 8(5) of Regulation 2017/1001 solely as regards the clothing in Class 25, in respect of which it rejected the opposition based on that provision and on Article 8(1)(b) of that regulation.

16      By contrast, with regard to the goods in Classes 3 and 16 covered by the mark applied for, the Board of Appeal dismissed the appeal and upheld the opposition based on Article 8(1)(b) of Regulation 2017/1001. So far as concerns those goods, it did not examine the conditions for the application of Article 8(5) of that regulation.

17      In that regard, it must be borne in mind that it is not for the Court to rule on an issue which was not examined by the Board of Appeal (see, to that effect, judgment of 29 March 2012, You-Q v OHIM – Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 80 and the case-law cited).

18      It follows that the second plea, alleging infringement of Article 8(5) of Regulation 2017/1001, cannot succeed.

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

19      The applicant claims that the Board of Appeal made errors in the comparison of the goods at issue, the assessment of the similarity of the signs at issue and the global assessment of the likelihood of confusion.

20      EUIPO submits that the Board of Appeal was right in finding that there was a likelihood of confusion in the present case. The intervener contends that the contested decision is not vitiated by any errors in law in the assessment of the likelihood of confusion.

21      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

22      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).

23      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

24      It is in the light of the abovementioned principles that the merits of the present plea must be examined.

25      It must be pointed out at the outset that the Board of Appeal found, in paragraph 39 of the contested decision, that the intervener had proved that the earlier mark had enhanced distinctiveness with regard to lip care products on account of its reputation. The parties have not called that assessment into question.

 The relevant public and its level of attention

26      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).

27      In the present case, the Board of Appeal pointed out, in paragraph 22 of the contested decision, that the goods at issue were aimed at the general public in the European Union, which displayed an average level of attention. In that regard, it added that those good were normally not particularly expensive and were purchased quite regularly.

28      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the parties, comply with the case-law cited in paragraph 26 above and must therefore be upheld.

 The comparison of the goods

29      In assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

30      According to the case-law, complementary goods are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).

31      Likewise, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).

32      In the present case, in paragraph 25 of the contested decision, the Board of Appeal, first of all, compared the goods in Classes 3 and 16 covered by the mark applied for with those covered by the earlier mark. It found that the toiletries, cleaning and fragrancing preparations, nail varnish, cosmetics and make-up in Class 3 covered by the mark applied for were included in the cosmetic preparations covered by the earlier mark, with the result that they were identical. As for the goods in Class 16 covered by the mark applied for, namely paper tissues for cosmetic use, it found that those goods were highly similar to the goods covered by the earlier mark on account of their complementary nature in regard to the application and removal of cosmetic preparations.

33      Secondly, in paragraph 26 of the contested decision, the Board of Appeal compared the goods in Classes 3 and 16 covered by the mark applied for and the goods covered by the earlier mark in respect of which a reputation on the part of that mark had been proved, namely lip care products. It concluded that those lip care products and the cosmetics covered by the mark applied for were identical since lip care products fell under the general term ‘cosmetics’. As regards the other goods in Classes 3 and 16 covered by the mark applied for, it took the view that they were either cosmetics or were related to cosmetics and that they had the same nature, shared the same distribution channels and were aimed at the same public as the lip care products. Consequently, they were found to be highly similar.

34      The applicant claims that the Board of Appeal incorrectly applied only two relevant factors when comparing the toiletries, cleaning and fragrancing preparations, nail varnish and make-up with the cosmetic preparations, thus leaving out decisive factors. According to the applicant, those decisive factors vividly illustrate the dissimilarity between the goods in question. Furthermore, she argues that the goods in Classes 3 and 16 covered by the mark applied for are fashion products, whereas that is not the case with regard to lip care products, which admittedly have the purpose of personal grooming, but with regard to which the improvement of the visual impression which a person makes is only a side effect. The applicant concludes that the nature, purpose and methods of use of the goods in question are different. She adds that the goods in Classes 3 and 16 covered by the mark applied for are not in competition with those covered by the earlier mark since it is not possible to substitute the purchase of nail varnish or make-up for the purchase of lip care products. Consequently, she submits that there is no similarity between toiletries, cleaning and fragrancing preparations, nail varnish and make-up and lip care products.

35      EUIPO and the intervener dispute the applicant’s claims.

36      First, it must be pointed out that the applicant does not dispute the Board of Appeal’s findings that the cosmetics in Class 3 and paper tissues for cosmetic use in Class 16 covered by the mark applied for are identical and highly similar respectively both to the goods covered by the earlier mark and to those with regard to which that mark has a reputation. Those findings must be upheld.

37      Secondly, it must be pointed out that the applicant does not put forward any specific argument seeking to call into question the Board of Appeal’s finding that the toiletries, cleaning and fragrancing preparations, nail varnish and make-up covered by the mark applied for are all cosmetics and are therefore identical to the cosmetic preparations covered by the earlier mark.

38      In that regard, it must be pointed out, as observed by EUIPO, that it is necessary to compare the goods as registered or as covered by the application for registration and not as resulting from the use of the mark at issue (see judgment of 25 November 2014, Brouwerij Van Honsebrouck v OHIM – Beverage Trademark (KASTEEL), T‑374/12, not published, EU:T:2014:990, paragraph 78 and the case-law cited). It must also be added, as observed by EUIPO and the intervener, that the applicant did not request proof of use of the earlier mark, in accordance with Article 47(2) of Regulation 2017/1001.

39      Thirdly, as regards the applicant’s argument that the lip care products and the goods covered by the mark applied for, such as nail varnish or make-up, are not in competition, it is sufficient to point out that the Board of Appeal did not make such a finding.

40      By contrast, the Board of Appeal correctly found that the goods in Classes 3 and 16 covered by the mark applied for and the lip care products all had the same nature of cosmetics and body-care products and had analogous purposes, namely personal grooming or the improvement of the impression a person makes. It was likewise justified in finding that those goods shared the same distribution channels since they are indeed sold in pharmacies or in the same sections of department stores.

41      It is true that it could be considered that some of the goods in Classes 3 and 16 covered by the mark applied for, such as nail varnish or make-up, are more intended to improve a person’s appearance than lip care products. The fact, however, remains that those goods are very similar in nature and, as was stated by the Board of Appeal, they share the same distribution channels, with the result that the existence of a high degree of similarity between those goods cannot be ruled out.

42      The Board of Appeal did not therefore err in finding that the goods in Classes 3 and 16 covered by the mark applied for were identical or highly similar, on the one hand, to the goods covered by the earlier mark and, on the other hand, to the goods in respect of which the reputation of that mark had been proved.

 The comparison of the signs

43      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs, 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).

44      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43 and the case-law cited).

45      In the present, it is necessary to compare the earlier word mark LABELLO and the figurative mark applied for, which is reproduced below:

–       The perception of the mark applied for and its dominant and distinctive elements

46      The Board of Appeal found, in paragraph 33 of the contested decision, that the mark applied for contained a decorative ‘cherub device’ consisting of a symmetrical depiction of two cherubs resting on a horizontal ornamental flourish and two large roses between them on a background of horizontal black lines. It also found that that mark contained, in its centre, the word element ‘labelle’, which was written in black upper-case letters in a stylised font and to the left of which a heart symbol preceded by the following element appeared:

47      Furthermore, it found that the word element ‘vienna’, which was written in much smaller white upper-case letters on a black rectangular background, appeared below the word element ‘labelle’.

48      According to the Board of Appeal, the ‘cherub device’ in the mark applied for was not merely decorative, but was distinctive. It also found that, together with the word element ‘labelle’, it was dominant in that mark. According to the Board of Appeal, the word element ‘labelle’, which did not correspond to any dictionary word in any of the languages of the European Union, had no clear and direct meaning, even though it might be perceived by some consumers as referring to the expression ‘la belle’ (‘the beautiful’) in French. As for the word element ‘vienna’ in that mark, the Board of Appeal found that it would be seen as an indication that the brand was based in Vienna and that that reference therefore made it non-distinctive.

49      As regards the element preceding the heart symbol in the mark applied for, which has been reproduced in paragraph 46 above, the Board of Appeal found that it would be perceived not as part of the word element ‘labelle’ in that mark, but rather as a figurative flourish echoing the left curve of the heart symbol which appeared immediately after it. However, it admitted that it was possible that that element could be perceived as the double letter ‘c’.

50      The applicant submits that, since the figurative elements in the mark applied for occupy a significant and primary position in that mark and the size of those elements is prevalent, they are the dominant elements in that mark. She adds that the cherubs and roses create the distinctive and particular image of that mark. By contrast, she submits that the word elements ‘cclabelle’ and ‘vienna’, which are smaller, are secondary. The applicant also submits that the element preceding the heart symbol, which has been reproduced in paragraph 46 above, is not a figurative element or a highly stylised element, but consists of two Latin letters ‘c’ like those used in the element ‘labelle’. She adds that those Latin letters and that element are joined together by a decorative heart-shaped element, cannot be detached from each other and form the fanciful element ‘cclabelle’. She submits that, consequently, by interpreting those Latin letters exclusively as symbols, the Board of Appeal reduced the mark in question to the element ‘labelle’ alone. She argues that even if those Latin letters were to be categorised as figurative flourishes, they would not become invisible and would still have visual distinctiveness.

51      As for the word element ‘vienna’ in the mark applied for, the applicant concedes that it refers to the city of Vienna (Austria), but submits that that city is not commonly known for the category of goods in question.

52      EUIPO, in contrast to the applicant, takes the view that the element preceding the heart symbol in the mark applied for, which has been reproduced in paragraph 46 above, does not display the uniform curvature or other defining characteristics of the letter ‘c’. It submits that the fact that those symbols are placed immediately before that of a heart is likely to lead consumers to perceive them as echoing the shape of that heart.

53      The intervener submits that, contrary to the Board of Appeal’s assessment and the applicant’s view, the figurative elements in the mark applied for are merely decorative and non-distinctive. It also disputes the applicant’s argument that the word element in that mark will be perceived as ‘cclabelle’.

54      As regards, first of all, the perception of the mark applied for and, in particular, that of the element preceding the heart symbol, which has been reproduced in paragraph 46 above, it must be pointed out that that element consists of two letters ‘c’, which are written in the same stylised font as the element ‘labelle’. Consequently, the applicant is justified in submitting that that mark contains those letters and that element with the heart symbol situated between them. However, that symbol is capable both of joining them together and of separating them, with the result that the relevant public might not perceive them as a whole.

55      In addition, on account of the specific stylisation of the font used, in which the letter ‘c’ is curved in such a way as to evoke the left curve of the heart symbol, and as a result of the fact that that symbol, the size of which is almost identical to that of the two letters ‘c’ and to that of the element ‘labelle’, is situated between those letters and that element, it cannot be ruled out that part of the relevant public will, as the Board of Appeal found, regard those letters more as constituting figurative flourishes.

56      As regards, next, the dominant elements of the mark applied for, it must be held that the overall image created by that mark will be dominated, first, by the figurative element representing the cherub device and, secondly, by the word element ‘cclabelle’ or ‘labelle’, depending on the relevant public’s perception of that word element. By contrast, it cannot be maintained, as the applicant claims, that the figurative element, on its own, will dominate the image created by that mark. As for the word element ‘vienna’, it must be stated that that element, on account of its size and position, plays only a secondary role in the mark at issue.

57      As regards, lastly, the distinctive elements of the mark applied for, it must be pointed out, as observed by the Board of Appeal, that the figurative element representing the cherub device is not merely decorative in the present case. It is a whole which is certainly capable of being perceived by the relevant public and consists of numerous components, which are arranged in a very specific way. Since the various components of that figurative element do not have any direct connection with the goods covered by that mark, the distinctive character of that figurative element is average.

58      In that regard, it must be added that the intervener’s argument that the figurative elements are merely decorative and non-distinctive, in so far as it is to be understood as an independent plea based on Article 173(3) of the Rules of Procedure, is incompatible with the form of order it is seeking and must be rejected, since the intervener has not applied for the annulment or alteration of the contested decision under that provision (see judgment of 29 January 2013, Fon Wireless v OHIM – nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 33 and the case-law cited).

59      However, it must be borne in mind that where a trade mark consists of word and figurative elements, the former are, in principle, considered to be more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by citing their name than by describing the figurative element of the trade mark (see judgment of 29 April 2020, Abarca v EUIPO – Abanca Corporación Bancaria (ABARCA SEGUROS), T‑106/19, not published, EU:T:2020:158, paragraph 51 and the case-law cited).

60      Thus, as regards the word element ‘cclabelle’ or ‘labelle’ in the mark applied for, it must be stated that it also has an average degree of distinctiveness. The heart symbol and the two letters ‘c’, where they are perceived as evoking the heart symbol, are decorative and therefore have a weak distinctive character. The same is true as regards the word element ‘vienna’, which, as the Board of Appeal found, will be perceived as a descriptive indication of the place in which that brand is based. In that regard, it is irrelevant whether or not the city of Vienna is commonly known for the goods in question. It is sufficient, in the present case, that such references are commonplace in the sector at issue.

61      It follows that the figurative element representing the cherub device and the word element ‘cclabelle’ or ‘labelle’, depending on its perception by the relevant public, have an average degree of distinctiveness and dominate the overall impression created by the mark applied for.

–       The visual similarity

62      The Board of Appeal found, in paragraph 34 of the contested decision, that the signs at issue were, overall, visually similar to a low degree. It observed that the element ‘labelle’ in the mark applied for was the same length as the earlier mark and that they had the first six letters in common. By contrast, it stated that those signs differed in the last letter of that element and of the earlier mark, in the presence of the ‘cherub device’, which was co-dominant in the mark applied for, and in the presence of the secondary terms in the mark applied for, namely the symbol created by the two letters ‘c’ and the word element ‘vienna’.

63      The applicant claims that the signs at issue are not visually similar on account of, in particular, the significance of the figurative elements. As regards the word elements, she submits that those in the mark applied for, namely ‘cclabelle’ and ‘vienna’, which the Board of Appeal reduced to the element ‘labelle’, consist of 15 letters and a heart, whereas the earlier mark consists of only 7 letters. In short, according to the applicant, those elements and the earlier mark have only six letters in common.

64      EUIPO and the intervener dispute the applicant’s claims.

65      Furthermore, the intervener submits that the signs at issue are visually similar, but maintains that the degree of that similarity is high or, at the very least, average, on account of the weak distinctive character of the figurative elements in the mark applied for.

66      In the present case, it must be pointed out that the signs at issue contain the word elements ‘labelle’ or ‘labello’, which differ only in their last letters. It is true that that similarity is attenuated by the presence, in the mark applied for, of other elements, such as, inter alia, the figurative element representing the cherub device, which is co-dominant in that mark. The word element ‘vienna’ is of little importance, on account of its secondary position, its size and its descriptiveness.

67      In those circumstances, and irrespective of the perception of the two letters ‘c’ in the mark applied for, it must be held that the Board of Appeal did not err in finding that there was a low degree of visual similarity between the signs at issue. The different elements in the mark applied for cannot entirely offset the similarity resulting from the presence of the element ‘labelle’, even if that element is perceived as forming a whole with the two letters ‘c’ and the heart symbol.

68      As regards the intervener’s argument that the degree of similarity is high in the present case, that argument must be rejected as inadmissible for the same reasons as those set out in paragraph 58 above.

69      In view of the foregoing considerations, the Board of Appeal did not err in finding that the signs at issue were visually similar to a low degree.

–       The phonetic similarity

70      The Board of Appeal found, in paragraph 35 of the contested decision, that the signs at issue were phonetically similar to a high degree. In particular, it found that the mark applied for would be pronounced by the relevant public as two or three syllables and that the earlier mark would be pronounced as three syllables. It observed that there was no counterpart in the mark applied for to the last letter, ‘o’, in the earlier mark, but that the pronunciation of each mark would, in any event, begin with the identical symbols ‘la’ and ‘bel’. As regards the symbol created by the two letters ‘c’ in the mark applied for and as regards the element ‘vienna’, the Board of Appeal took the view that they would not be pronounced.

71      The applicant claims that there is no phonetic similarity between the signs at issue on account of the different number of syllables and letters. She submits, in essence, that the two letters ‘c’ in the mark applied for will be pronounced. Furthermore, she claims that the common rhythm of those signs is significantly dissimilar and that the pronunciation of those letters adds significant distinctiveness to the phonetic aspect of the mark applied for. She disputes the finding that the element ‘vienna’ is descriptive and submits that it will be pronounced in that mark. She also submits that the figurative elements have an effect on the phonetic perception of the sign.

72      EUIPO and the intervener dispute the applicant’s arguments.

73      First of all, it must be borne in mind that a figurative element cannot, as such, be pronounced. At the very most, its visual or conceptual content can be described orally. However, such a description necessarily coincides with either the visual or the conceptual perception of the element concerned (see, to that effect, judgments of 14 February 2008, Orsay v OHIM – Jiménez Arellano (O orsay), T‑39/04, not published, EU:T:2008:36, paragraph 49, and of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf), T‑681/15, not published, EU:T:2017:296, paragraph 52 and the case-law cited). Likewise, if a figurative mark also includes a word element, it will in general be by using that word element that the relevant public will refer to the mark (see judgment of 30 January 2020, Julius Sämann v EUIPO – Maharishi Vedic University (Representation of a tree), T‑559/19, not published, EU:T:2020:19, paragraph 33 and the case-law cited). Consequently, the arguments which the applicant seeks to derive from the pronunciation of the figurative element in the mark applied for must be rejected.

74      Next, it must be pointed out, as stated by the Board of Appeal, that there is a high degree of similarity in the pronunciation of the element ‘labelle’, which is co-dominant in the mark applied for, and of the earlier mark. In that regard, it must be held that it cannot be ruled out, contrary to what the applicant claims, that the two letters ‘c’ will not be pronounced, since the heart symbol separates them from that element and that fact is capable of having an influence on their perception (see paragraphs 54 and 55 above).

75      In any event, even if the mark applied for were perceived as being ‘cclabelle’ by part of the relevant public, the degree of phonetic similarity between that mark and the earlier mark would be, at the very least, average, on account of the coincidence in the letters ‘l’, ‘a’, ‘b’, ‘e’, ‘l’ and ‘l’.

76      Lastly, it must be stated that the word element ‘vienna’, as has been held in paragraphs 56 and 60 above, has a secondary position and is descriptive. Consequently and in the light of, in particular, the natural tendency of consumers to abbreviate long signs and not to pronounce all the word elements of which they consist (see, to that effect, judgment of 20 September 2019, M.I. Industries v EUIPO – Natural Instinct (Nature’s Variety Instinct), T‑287/18, not published, EU:T:2019:641, paragraph 71 and the case-law cited), it is unlikely to be pronounced.

77      It follows that the Board of Appeal did not err in finding that the signs at issue were phonetically similar to a high degree, at least as regards part of the relevant public.

–       The conceptual similarity

78      The Board of Appeal found, in paragraph 36 of the contested decision, that no conceptual comparison could, in the present case, be carried out, since the earlier mark had no meaning in the relevant territory.

79      It is true that the parties do not directly challenge that assessment, the applicant taking the view, in particular, that the earlier mark is a fanciful sign which has no meaning. However, the applicant submits that the word element ‘cclabelle’ in the mark applied for means ‘copy the beautiful’ and that, consequently, there is no conceptual similarity between the signs at issue, thus, in actual fact, calling into question the finding of the Board of Appeal which has been referred to in paragraph 78 above.

80      In that regard, it must be pointed out, as observed by the Board of Appeal, that the earlier mark does not convey any conceptual message that is capable of being perceived by the relevant public. That is not, however, the case as regards the mark applied for, the figurative element of which contains, as the Board of Appeal pointed out in paragraph 33 of the contested decision, two cherubs and two large roses. The conceptual message conveyed by those components of the figurative element of the mark applied for will easily be perceived by the relevant public.

81      As is apparent from the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).

82      Consequently, contrary to what the Board of Appeal found, it was possible to carry out a conceptual comparison of the signs at issue. The fact, however, remains that no conceptual similarity can be held to exist in the present case.

 The likelihood of confusion

83      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

84      In the present case, the Board of Appeal found, in paragraph 40 of the contested decision, that, given that the goods at issue were, in part, identical and, in part, highly similar, taking into account the average degree of attention of the relevant public and regardless of whether the earlier mark had an enhanced distinctive character in respect of lip care products, the low degree of visual similarity and the average degree of phonetic similarity were sufficient to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

85      To begin with, it must be held that the statement, in paragraph 40 of the contested decision, that the degree of phonetic similarity is average is an obvious clerical error. The assessment of the phonetic similarity of the signs at issue, which is set out in paragraph 35 of the contested decision, contains the grounds on which the marks at issue will be pronounced respectively as ‘la-bel-e’, or ‘la-bel’, and ‘la-bel-o’, leaving no doubt that, according to the Board of Appeal, the degree of phonetic similarity was high, as is apparent from the last sentence in that paragraph (see also paragraph 70 above).

86      The applicant disputes those findings, claiming that there is no likelihood of confusion in the present case and that, even if there were a low degree of phonetic similarity between the signs at issue and the goods at issue were identical, it is the visual aspect which has increased importance on account of the way in which those goods are sold. Submitting, in essence, that the importance of the criterion relating to the reputation of the earlier mark with regard to lip care products should not be exaggerated, she reiterates her argument that the intervener does not operate on the market for colour cosmetics or fashion products on which she operates. In short, according to the applicant, even though that mark has enhanced distinctiveness, the differences between those signs, in particular due to the conceptual unit created by the combination of the word element and the figurative element in the mark applied for, are significant enough to rule out any likelihood of confusion.

87      EUIPO and the intervener dispute the applicant’s claims.

88      It must be stated that the goods at issue are, in part, identical and, in part, highly similar (see paragraph 42 above) and that the signs at issue are visually similar to a low degree (see paragraph 69 above) and, for at least part of the relevant public, phonetically similar to a high degree (see paragraph 77 above). By contrast, those signs are not conceptually similar (see paragraph 80 above).

89      Furthermore, it is not disputed that the earlier mark has a reputation as regards lip care products which are, in part, identical and, in part, highly similar to the goods covered by the mark applied for (see paragraphs 25, 36, 40 and 41 above).

90      In that regard, it must be borne in mind, as is apparent from recital 11 of Regulation 2017/1001, that the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

91      So far as concerns the applicant’s argument that the visual aspect plays a decisive role in the assessment of the likelihood of confusion as regards the goods at issue, it must be pointed out that it is settled case-law that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The importance of the elements of similarity or dissimilarity between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods covered by marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (see judgments of 6 October 2004, New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 68 and the case-law cited).

92      It is true, as EUIPO points out, that the judgment of 15 April 2010, Cabel Hall Citrus v OHIM – Casur (EGLÉFRUIT) (T‑488/07, not published, EU:T:2010:145, paragraph 48), on which the applicant relies, relates to foodstuffs and beverages in Classes 29 to 32 and not to the goods at issue, with the result that the argument which the applicant derives from that judgment is ineffective in the present case.

93      However, and contrary to what EUIPO submits, it has already been held, as regards goods in Class 3 which are similar to the goods at issue, that the visual aspect of the mark is, in principle, of more importance in the global assessment of the likelihood of confusion (see, to that effect, judgments of 26 March 2015, Emsibeth v OHIM – Peek & Cloppenburg (Nael), T‑596/13, not published, EU:T:2015:193, paragraph 53, and of 21 May 2015, Evyap v OHIM – Megusta Trading (nuru), T‑56/14, not published, EU:T:2015:304, paragraph 46; see, also, to that effect, judgment of 20 January 2021, Apologistics v EUIPO – Peikert (discount-apotheke.de), T‑844/19, not published, EU:T:2021:25, paragraph 111 and the case-law cited).

94      That does not, however, mean that the phonetic aspect of the comparison of the signs must always be disregarded. Although the goods at issue are indeed sold in self-service stores, they are also likely to be recommended or purchased orally. Consumers could seek assistance from a salesperson or be led to choose goods from the categories in question because they have heard them being spoken about, in which case they might retain the phonetic impression of the mark in question as well as the visual aspect (see judgment of 2 December 2020, inMusic Brands v EUIPO – Equipson (Marq), T‑687/19, not published, EU:T:2020:582, paragraph 98 and the case-law cited). That is particularly so in the present case. Consequently, the high degree of phonetic similarity between the signs at issue must also be taken into account in the global assessment of the likelihood of confusion between the marks at issue.

95      Furthermore, as regards the applicant’s argument that the goods covered by the mark applied for are colour cosmetics or fashion products, it must be borne in mind, first, that, as particular marketing strategies for the goods covered by the marks may vary over time depending on the wishes of the proprietors of those marks, an analysis of whether there will be a likelihood of confusion cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see judgment of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 63 and the case-law cited). Thus, the use which the applicant intends to make of that mark is irrelevant in this context.

96      Secondly, it must be borne in mind that, in opposition proceedings, EUIPO may only take account of the list of goods and services applied for as it appears in the trade mark application, subject to any amendments thereto (see judgment of 22 March 2007, Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 89 and the case-law cited). It follows that the argument of the applicant which has been referred to in paragraph 95 above cannot succeed.

97      In those circumstances, and in the light of the principle of interdependence, which has been referred to in paragraph 83 above, the Board of Appeal was right in finding that there is a likelihood of confusion, at least when the reputation of the earlier mark for lip care products is taken into account.

98      In view of all of the foregoing considerations, the present plea must be rejected and the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s third head of claim.

 Costs

99      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.

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

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Ms Maria Alexandra Canisius to pay the costs.

Delivered in open court in Luxembourg on 2 February 2022.

*      Language of the case: English.

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