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

JUDGMENT OF THE GENERAL COURT (Third Chamber)

22 March 2023 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark love you so much – Earlier EU figurative mark I LOVE YOU SINCE FOREVER – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑306/22,

Fun Factory GmbH, established in Bremen (Germany), represented by K.-D. Franzen, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

I Love You, Inc., established in Lewes, Delaware (United States),

THE GENERAL COURT (Third Chamber),

composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and G. Steinfatt, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

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

1        By its action under Article 263 TFEU, the applicant, Fun Factory GmbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 March 2022 (Case R 1464/2021-4) (‘the contested decision’).

 Background to the dispute

2        On 26 November 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign love you so much.

3        The mark applied for covered goods in Classes 5 and 10 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, corresponding, for each of those classes, to the following description:

–        Class 5: ‘Lubricants being sexual aids’;

–        Class 10: ‘Massage apparatus, in particular massage rods with and without motors, and massage balls, sexual aids of silicon and other plastics, erection and orgasm-enhancing articles, included in class 10; Menstruation cups, Condoms’.

4        On 18 May 2020, I Love You, Inc. filed a notice of opposition pursuant to Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5        The opposition was based on the following earlier EU figurative mark:

6        The earlier mark was filed on 20 May 2019 and registered under number 18069771 on 30 October 2019. It covered goods in Classes 5 and 10 corresponding, for each of those classes, to the following description:

–        Class 5: ‘Personal sexual lubricants’;

–        Class 10: ‘Massage devices; devices for massaging, vibrating or stimulating the body; devices for aiding copulation, masturbation and sexual arousal, including synthetic reproductions of parts of the male and female anatomy; synthetic reproductions of penises and vaginas; penis rings; nipple clamps; Vibrators, being adult sexual aids; dildos; dongs; butt plugs; penis sleeves; penis extensions; harnesses (being adult sexual aids); masturbators; body prostheses; Love dolls [sex dolls]; vaginal exercisers; condoms; gags (being adult sexual aids)’.

7        On 9 July 2021, the Opposition Division upheld the opposition in part, namely for all the goods referred to in paragraph 3 above with the exception of ‘menstruation cups’.

8        On 25 August 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9        By the contested decision, the Board of Appeal dismissed the appeal. In particular, as regards the determination of the relevant public, it stated that it had based its finding on the perception by the English-speaking general public and found that, with regard to some of the goods at issue, that public had a high level of attention. It found that the goods at issue were identical. As regards the comparison of the marks at issue, it found that, visually and phonetically, the marks were similar to an average degree and that, conceptually, they were similar to at least an average degree. It also found that the distinctive character of the earlier mark was lower than normal. Lastly, the Board of Appeal found that, in its global assessment, it had to be concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

11      EUIPO contends that, if the Court should find that there is a likelihood of confusion in the present case, the Court should:

–        dismiss the action;

–        order the applicant to pay the costs if a hearing is organised.

12      If the Court should find that there is no likelihood of confusion in the present case, EUIPO contends that the Court should:

–        annul the contested decision;

–        order EUIPO to bear only its own costs.

 Law

13      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

14      In support of its single plea in law, the applicant argues that the Board of Appeal erred in finding that there was a likelihood of confusion.

15      EUIPO defers to the wisdom of the Court to assess the likelihood of confusion.

16      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.

17      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).

18      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).

19      It should also be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

20      It is in the light of the foregoing that the single plea in law is to be examined.

 The relevant public

21      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).

22      In the present case, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory for the purpose of examining the likelihood of confusion was that of the European Union. However, for reasons of procedural economy, the Board of Appeal decided that the likelihood of confusion should be assessed having regard to the English-speaking part of the relevant public.

23      There is no reason to challenge that assessment, which, moreover, is not contested by the parties.

24      As regards the composition of the relevant public and its level of attention, the Board of Appeal found that it consisted of the general public and recalled the case-law according to which the average consumer is reasonably well informed and reasonably observant and circumspect. There is no reason to challenge the Board of Appeal’s assessment relating to the composition of the general public and, moreover, that assessment has not been disputed by the parties.

25      The Board of Appeal did not call into question the Opposition Division’s finding that the relevant public’s level of attention might vary from average to high with regard to the goods at issue. However, as regards sex toys and condoms, it stated that the relevant public would have an increased level of attention. It did not make any such statement in respect of sexual lubricants, which implies that it implicitly considered that the level of attention in respect of those goods had to be regarded as average.

26      As to the Board of Appeal’s assessment that the relevant public’s level of attention is high with regard to sex toys, there is no need to challenge that assessment and, moreover, it has not been disputed by the parties.

27      Concerning the relevant public’s level of attention with regard to condoms, the parties have not disputed the Board of Appeal’s finding that it had to be regarded as high. However, the Court has previously held that the level of attention with regard to such goods was average. Accordingly, the same conclusion must be reached here. Condoms are single-use products, sold over the counter at an affordable price, and their purchase is not generally accompanied by a long period of analysis, reflection or comparison of offers (judgment of 8 September 2016, Dr Vita v EUIPO (69), T‑360/15, not published, EU:T:2016:451, paragraph 17).

28      The same applies to sexual lubricants. Even though sexual lubricants are intended for intimate use, they are inexpensive products which are available for self-service in shops and online. Furthermore, since those products all provide more or less the same functionality, their purchase is likewise not accompanied by any particular analysis or detailed comparison of offers. Consequently, the relevant public’s level of attention must be regarded as average for those goods. This point has not, moreover, been disputed by the parties.

 The comparison of the goods

29      In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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      In the present case, the Board of Appeal found that the goods at issue were identical. There is no reason to challenge that assessment, which, moreover, is not contested by the parties.

 The comparison of the signs

31      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

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

33      The Board of Appeal found, in essence, that, in the light of the existence of the word element ‘love you’ in the marks at issue, the marks alluded to the purpose of using the goods in so far as they are used in connection with sexual activities, in other words when making love. Consequently, it found that their distinctiveness was somewhat lower than average. It also found that the word element ‘i love you’ was the most dominant element in the earlier mark. In the light, in particular, of the word element ‘love you’, it found that the marks were visually and phonetically similar to an average degree and conceptually similar to at least an average degree. It concluded that, overall, the marks were similar to an average degree.

34      The applicant submits, first of all, that the word elements ‘i love you’ and ‘since forever’ together constitute the dominant part of the earlier mark. Next, it submits that the Board of Appeal’s assessment that there was an average degree of visual similarity between the marks at issue should be rejected. Since only two words out of five are the same and their graphic representation is completely different, the degree of visual similarity between the marks is below average. Lastly, it submits that there is no phonetic similarity and the only conceptual similarity is that both marks are based on the concept of love.

35      As regards the analysis of the earlier mark, the word element ‘i love you’ constitutes the dominant element on account of its size and position. Contrary to the applicant’s submission, the word element ‘since forever’ and the figurative elements representing hearts occupy a secondary position in the mark. The word element ‘since forever’ is written in a much smaller typeface and its purpose is to place emphasis on the word element ‘i love you’. Similarly, the figurative elements have a decorative purpose reinforcing the concept of love.

36      In the present case, as regards the analysis of the mark applied for, it must be found, as the Board of Appeal stated in paragraph 31 of the contested decision, that the word element ‘so much’ in that mark is used to place emphasis on the word element ‘love you’ and does not add much to its semantic content. In that regard, it must be held that the latter word element is the dominant element in the mark applied for. Thus, contrary to the applicant’s argument, even taking into account the fact that the word element ‘so much’ constitutes half of the mark applied for, that cannot lead to the conclusion that that element will be perceived by the relevant public as being as important as the word element ‘love you’.

37      As regards the visual comparison, the marks at issue coincide in the word element ‘love you’, which constitutes the main part of the dominant element of the earlier mark and the first part of the mark applied for. The marks differ in the word element ‘so much’ of the mark applied for, in the word elements ‘i’ and ‘since forever’ in the earlier mark and in the stylisation and figurative elements of the earlier mark representing hearts. As stated in paragraph 35 above, the word element ‘since forever’ and the figurative elements representing hearts occupy a secondary position in the earlier mark. Contrary to the applicant’s submission, the stylisation of the word elements of the earlier mark, the differences in the size of the letters of the word element ‘i love you’ and the lack of spaces between the letters contribute little to establishing a difference between the mark applied for and the earlier mark.

38      The applicant submits that account should be taken of the fact that the marks at issue begin differently in that the earlier mark begins with the word element ‘i’ and the mark applied for with the word element ‘love’. In that regard, it must be held, as the Board of Appeal found, that the letter ‘i’ in the earlier mark is not visually outstanding. Even if, according to case-law, the consumer normally attaches more importance to the first part of words (see judgment of 18 June 2008, Coca-Cola v OHIM – San Polo (MEZZOPANE), T‑175/06, EU:T:2008:212, paragraph 31 and the case-law cited), the letter ‘i’, owing to its form and taking account of the fact that it is a single letter, has little impact on the visual impression produced by the earlier mark.

39      However, in the light of the case-law cited in the preceding paragraph, it must be held that the two marks have a certain similarity in that the word element ‘love you’ is placed in the first part of their respective word elements.

40      Accordingly, the Board of Appeal did not make an error of assessment in finding that the marks were visually similar to an average degree.

41      As regards the phonetic comparison, the marks at issue both contain the word element ‘love you’. By contrast, they differ in the word element ‘so much’ in the mark applied for and in the word elements ‘i’ and ‘since forever’ in the earlier mark.

42      The applicant submits that the pronunciation of the marks at issue differs considerably in that the earlier mark begins with ‘i’. It also submits that the earlier mark is significantly longer.

43      In that regard, it should be stated that, despite the pronunciation of the letter ‘i’, the relevant public will perceive very few differences between the marks. As regards the word element ‘since forever’ in the earlier mark, the Board of Appeal stated, in paragraph 34 of the contested decision, that at least a part of the relevant public will not pronounce that element in view of its size and subsidiary position. For the same reasons and also taking into account the length of the phrase, it must be held that a substantial part of the relevant public will not pronounce those words. Even if they were pronounced, and also taking into account that the word element of the earlier mark is formed of more syllables than that of the mark applied for, that word element and the word element ‘so much’ of the mark applied for are both placed after the common word element ‘love you’ and thus give rise to a certain similarity between the marks. In the light of the foregoing, it must be held that the marks are phonetically similar to an average degree.

44      As regards the conceptual comparison, the relevant public will understand that the marks at issue refer to love and making love. The figurative elements of the earlier mark representing hearts reinforce that meaning.

45      According to the applicant, the word elements ‘since forever’ in the earlier mark and ‘so much’ in the mark applied for lead to a significant difference in the meaning of the marks. The first of those word elements refers to the temporal aspect of love, whereas the second refers to the intensity of love. In that regard, it must be held that, notwithstanding their different meanings, those word elements both serve positively to reinforce the word element ‘love you’.

46      The applicant also disputes the Board of Appeal’s assessment as regards the impact of the word element ‘i’ from a conceptual standpoint. It submits that the earlier mark describes love solely from the point of view of one person towards another, whereas the statement in the mark applied for may be interpreted as coming from one or more other persons, or as a call to a person to love himself or herself. As the Board of Appeal rightly pointed out, it is generally understood that the phrase ‘love you’ is expressed in the first person singular. Similarly, it cannot be accepted that the phrase ‘love you’ could be interpreted as referring to loving oneself, since that would be expressed by the word ‘yourself’ instead of ‘you’.

47      In the light of those considerations, it must be concluded that the Board of Appeal did not make an error of assessment in finding that the marks were conceptually similar to an average degree.

 The distinctiveness of the earlier mark

48      In paragraph 42 of the contested decision, the Board of Appeal upheld the Opposition Division’s assessment in so far as it had found that the distinctiveness of the earlier mark was ‘lower than normal’. Those terms should be understood to mean that the earlier mark has a weak inherent distinctive character.

49      It must be held, as the Board of Appeal found, that the earlier mark alludes to the purpose of the goods concerned, inasmuch as they are used in connection with sexual activities. It follows that, as the Board of Appeal was entitled to find, the earlier mark has a weak inherent distinctive character.

 The overall assessment of the likelihood of confusion

50      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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

51      The relevant factors to be taken into account in the global assessment of the likelihood of confusion also includes the distinctiveness of the earlier mark. However, that is only one factor among others involved in the assessment of the likelihood of confusion. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

52      The Board of Appeal found that the distinctiveness of the earlier mark was lower than normal. It reiterated that the relevant public’s level of attention was relatively high and that the goods at issue were identical. As regards the similarity of the marks, it reiterated that they were visually and phonetically similar to an average degree and that they had some degree of conceptual similarity. Furthermore, it found that the marks had a similar structure inasmuch as they were composed of words expressing love and elements which qualify that feeling. That said, it concluded, also applying the principles of interdependence and imperfect recollection, that there was a likelihood of confusion.

53      The applicant submits that there is no likelihood of confusion in the present case due to the dissimilarity of the marks at issue and the fact that the distinctiveness of the earlier mark is below average. In that regard, it submits that the signs coincide only in the word element ‘love you’, which does not appear as an autonomous element in both signs and is not the first component of the earlier sign. Similarly, the Board of Appeal based the likelihood of confusion solely on that verbal coincidence. In view of the fact that the signs are completely different visually, phonetically and conceptually, this leads to excessive protection of the earlier sign and precludes all trade mark registrations which contain the word element ‘love you’.

54      EUIPO states that the common elements ‘love you’ in the marks at issue, as well as the earlier mark as a whole, are not fully distinctive. It contends that there are two lines of case-law dealing with ‘weak trade marks’. That said, it defers to the wisdom of the Court to assess the likelihood of confusion.

55      In the present case, as regards the distinctiveness of the earlier mark, it should be borne in mind that that mark has a weak inherent distinctive character.

56      As regards the similarity of the marks at issue, that similarity relates to the presence of the word element ‘love you’, which gives rise to the average degree of visual, phonetic and conceptual similarity. That word element constitutes the main part of the dominant element of the earlier mark and the first part of the mark applied for. While it is true that the relevant public will attribute to the word element ‘love you’ a weak function as an indication of the commercial origin of the goods covered, the fact remains that that element is dominant in each of the marks at issue. As regards the word element ‘since forever’, which occupies the secondary position in the earlier mark, and the word element ‘so much’, which forms the second part of the mark applied for, they both serve positively to reinforce the common word element ‘love you’. The two marks thus have, in essence, the same structure in their respective first and second parts and give the relevant public an overall impression of similarity.

57      Furthermore, it should be added that a finding that there is a likelihood of confusion leads to the protection of only a certain combination of elements without protecting as such a descriptive element which forms part of that combination (see, by analogy, orders of 15 January 2010, Messer Group v Air Products and Chemicals, C‑579/08 P, not published, EU:C:2010:18, paragraph 73, and of 30 January 2014, Industrias Alen v The Clorox Company, C‑422/12 P, EU:C:2014:57, paragraph 45).

58      In the light of the foregoing, the applicant’s argument relating to the dissimilarity of the marks must be rejected.

59      As to the relevant public’s level of attention, in the present case, the existence of a likelihood of confusion cannot be ruled out because the relevant public’s level of attention with regard to some of the goods is high. It should be borne in mind that the fact that the public in question will pay more attention to the identity of the producer or supplier of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them (see judgment of 21 November 2013, Equinix (Germany) v OHIM – Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54 and the case-law cited).

60      Accordingly, it must be held that, despite the weak distinctive character of the elements common to the signs at issue, the weak inherent distinctiveness of the earlier mark and the high level of attention of the relevant public when purchasing some of the goods at issue, the Board of Appeal was entitled to find that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. That conclusion takes account of the other factors to be weighed in the global analysis of the likelihood of confusion, such as the identity of the goods at issue, the visually and phonetically dominant character, within each of the signs at issue, of the elements common to those signs and the average level of visual, phonetic and conceptual similarity between those signs.

61      In the light of all of the foregoing considerations, the single plea in law must be rejected and, consequently, the action must be dismissed.

 Costs

62      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.

63      Since EUIPO has claimed that the applicant should be ordered to pay the costs only in the event that a hearing is held, the parties must be ordered to bear their own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 22 March 2023.

*      Language of the case: English.

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