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

JUDGMENT OF THE GENERAL COURT (First Chamber)

20 November 2024 (*)

( EU trade mark - Opposition proceedings - Application for the EU word mark CLEOPATRA - Earlier EU word mark CLEOPATRA - Relative grounds for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )

In Case T‑482/23,

Afaaq Ahmad Qozgar, residing in Thiruvananthapuram (India), represented by L. Pivec, lawyer,

applicant,

v

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

defendant,

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

L’Oréal, established in Paris (France), represented by T. de Haan and S. Vandezande, lawyers,

THE GENERAL COURT (First Chamber),

composed of I. Gâlea, acting as President, T. Tóth (Rapporteur) and S.L. Kalėda, Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 24 September 2024,

gives the following

Judgment

1        By his action based on Article 263 TFEU, the applicant, Mr Afaaq Ahmad Qozgar, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2023 (Case R 2509/2022-5) (‘the contested decision’).

 Background to the dispute

2        On 22 October 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign CLEOPATRA.

3        The mark applied for designated goods in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘wax strips for removing body hair; depilatory creams; wax (depilatory -); hair removing cream; depilatory preparations; depilatories; depilatory waxes; depilatory wax’.

4        On 7 April 2020, the intervener, L’Oréal, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5        The opposition was based on the earlier EU word mark CLEOPATRA.

6        The goods designated by the earlier mark on which the opposition was based are in Class 3 and correspond to the following description: ‘Cosmetics, toilet preparations, not for medical use, soaps, bars of soap, soap (cakes of -), liquid soaps, shower gels, anti-perspirant soap, deodorant soap, disinfectant soaps’.

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

8        Following a request made by the applicant, EUIPO invited the intervener to provide proof of genuine use of the earlier mark relied on in support of the opposition. The intervener complied with that request within the prescribed period.

9        On 15 November 2022, the Opposition Division, after finding that genuine use of the earlier mark had been proved for some of the goods referred to in paragraph 6 above, upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001, taking the view that there was a likelihood of confusion in respect of the goods referred to in paragraph 3 above.

10      On 16 December 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

11      By the contested decision, the Board of Appeal dismissed the appeal. First, it noted that the relevant public was made up of the general public, which displayed an average level of attention. Second, finding that genuine use of the earlier mark had been shown in respect of the goods in Class 3 ‘soaps, shower gels’, it considered that the goods at issue were similar to at least an average degree. Third, it observed that the signs at issue were identical. Fourth, taking the view that the earlier mark had an average degree of distinctiveness, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in respect of the goods referred to in paragraph 3 above.

 Forms of order sought

12      The applicant claims, in essence, that the Court should:

–        alter the contested decision, by annulling that decision and altering the decision of the Opposition Division, to the effect that the opposition is rejected;

–        order EUIPO and the intervener to bear their own costs in the proceedings before the Court and order EUIPO to pay the costs incurred by the applicant in the present proceedings and for the purpose of the proceedings before the Board of Appeal and the Opposition Division.

13      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that a hearing is scheduled.

14      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

15      In support of his action, the applicant relies, in essence, on three pleas, the first alleging infringement of essential procedural requirements flowing from the extension of the time limit relating to proof of use, the second alleging failure to state reasons and the third alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

 The first plea in law, alleging infringement of essential procedural requirements flowing from the extension of the time limit relating to proof of use

16      By his first plea, the applicant submits that, by confirming the extension by the Opposition Division, on its own initiative, of the initial time limit by which the intervener was to supply proof of genuine use of the earlier mark, the Board of Appeal infringed Article 47(2) of Regulation 2017/1001 and Article 10(2) and Article 68 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). The applicant argues that the Opposition Division could have granted such an extension in accordance with Article 68 of Delegated Regulation 2018/625 only if the intervener had made a reasoned request to that effect, which is not the case here. He infers that the Board of Appeal should have rejected the opposition because the intervener had not supplied any evidence capable of proving genuine use of the earlier mark by the day on which the time limit initially set, that is, 11 December 2020, expired.

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

18      As a preliminary point, the Court notes that it is common ground between the parties that the intervener sent evidence to prove use of the earlier mark on 21 January 2021, that is, within the time limit set and communicated by EUIPO by letter of 19 November 2020.

19      Regarding whether EUIPO could validly extend the time limit initially set for the intervener to produce such evidence, it is, admittedly, true that Article 68 of Delegated Regulation 2018/625 provides that EUIPO may grant an extension of a time limit upon reasoned request submitted by the party concerned before that time limit expires.

20      However, there is nothing to support the applicant’s claim that this is the only possibility for EUIPO to extend the time limit set for submitting proof of genuine use of a mark.

21      It must be borne in mind that Article 10(2) of Delegated Regulation 2018/625 provides, inter alia, that, where the applicant has made a request for proof of use of an earlier mark, EUIPO is to invite the opposing party to provide the proof required ‘within a time limit specified by [EUIPO]’. That provision confers on EUIPO the power to establish a time limit for submitting proof of genuine use and therefore, necessarily, that of extending such a time limit.

22      EUIPO could therefore, as it argues in essence, lay down, in paragraph 7.2.1.3 of Section 1 of Part C of its examination guidelines, that a time limit such as that set for the opponent to submit proof of genuine use of the mark on which it based its opposition could be extended on EUIPO’s own initiative ‘if and when particular reasons make it necessary’.

23      In that regard, it is clear from the case-law that EUIPO examination guidelines, although they lack binding force, are a reference source on EUIPO’s practice in respect of trade marks (judgment of 18 September 2015, Federación Nacional de Cafeteros de Colombia v OHIM – Hautrive (COLOMBIANO HOUSE), T‑387/13, not published, EU:T:2015:647, paragraph 45). Those guidelines are a consolidated set of rules setting out the line of conduct which EUIPO itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on EUIPO, namely that of compliance with the rules which it has itself laid down (judgment of 18 September 2015, COLOMBIANO HOUSE, T‑387/13, not published, EU:T:2015:647, paragraph 46 and the case-law cited).

24      The ‘particular reasons’ in this case within the meaning of paragraph 7.2.1.3 of Section 1 of Part C of EUIPO’s examination guidelines are that the applicant, after having requested proof of use, also submitted written observations on the opposition without waiting to receive the intervener’s proof of use or the expiry of the initial time limit on 11 December 2020. As observed by the Board of Appeal in paragraph 23 of the contested decision, it is therefore for reasons of fair and sound administration that the Opposition Division found it appropriate to align the time limit for the intervener to submit proof of use of the earlier mark and the time limit for the applicant to submit written observations on the opposition, by setting the expiry of the time limit of 21 January 2023 for completing both of those formalities. Moreover, contrary to the applicant’s claim, it cannot be validly argued that such an extension is arbitrary, as it is a result of the applicant’s choice to lodge written observations on the opposition before having received evidence of genuine use of the earlier mark. It is appropriate to add that the applicant does not rely on any legal provision of higher authority with which the extension of the time limit set by the Opposition Division would not be consistent.

25      It is apparent from the foregoing considerations that the Board of Appeal did not err in confirming the Opposition Division’s decision which extended the time limit initially set for the intervener to submit evidence of use of the earlier mark.

26      The first plea must therefore be rejected.

 The second plea in law, alleging failure to state reasons

27      By his second plea, the applicant argues that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001, read in conjunction, in particular, with Article 18, Article 47(2) and Article 107 of that regulation.

28      In essence, the applicant submits that the intervener deliberately omitted to rely on the goods ‘depilatory wax, hair removal preparations, hair removal paste’ – almost identical to the goods covered by the mark applied for – in support of its opposition, in order to avoid the application of Article 47(2) of Regulation 2017/1001 and the consequences of non-use of the earlier mark in respect of those goods. The applicant alleges that, had the intervener relied on those goods, the Opposition Division and, consequently, the Board of Appeal would have been required to reject the opposition without examining the other goods. The applicant infers that the intervener acted in bad faith and that the Board of Appeal could not merely allege, in paragraph 34 of the contested decision, that the intervener was free to ‘decide to base its opposition only on some of the goods covered by its earlier mark, without this implying any unlawful intention to circumvent the rules on proof of use or to obstruct free competition in the cosmetics industry’.

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

30      In that regard, the Court observes that, contrary to the applicant’s claim, there is no rule that an opposition must necessarily be based on all the goods and services covered by an earlier mark.

31      On the contrary, as EUIPO and the intervener are correct to submit, Article 47(2) of Regulation 2017/1001 provides that the ‘proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that [that mark] has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered and which [the proprietor] cites as justification for [its] opposition’. Moreover, Article 2(2)(g) of Delegated Regulation 2018/625 provides that the notice of opposition must contain ‘an indication of the goods or services on which each of the grounds of the opposition is based’. In addition, paragraph 2.4.2.3 of Section 1 of Part C of the EUIPO examination guidelines states that ‘the opposition can be based on all the goods and services for which the earlier mark is registered or applied for, or on only some of the goods and services’ and that if the ‘goods and services on which the opposition is based are fewer than the goods and services for which the mark is registered, the goods and services on which the opposition is not based need not be indicated, as they are irrelevant to the proceedings’.

32      Having regard to the wording of the foregoing provisions, the Court therefore finds that the Board of Appeal was correct to state that the intervener was free to ‘decide to base its opposition only on some of the goods covered by its earlier mark’. Similarly, given that the intervener acted in accordance with Article 47(2) of Regulation 2017/1001 and Article 2(2)(g) of Delegated Regulation 2018/625 and failing any evidence adduced by the applicant, it cannot be validly argued that the intervener acted in bad faith to circumvent the application of Article 47 of Regulation 2017/1001.

33      In any event, it is necessary to reject the applicant’s argument that, if the intervener had relied on the goods ‘depilatory wax, hair removal preparations, hair removal paste’ – almost identical to the goods covered by the mark applied for – the Board of Appeal would have been required to reject the opposition without examining the other goods. Even if those goods had been relied on and the intervener had been unable to provide proof of their use, the Board of Appeal would have had to carry out the examination of the opposition having regard to the goods covered by the earlier mark in respect of which use had been proved, that is, soaps and shower gels.

34      It follows from the foregoing considerations that the second plea in law must be rejected.

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

35      In essence, the applicant denies that there is any likelihood of confusion on the part of the relevant public on the ground that the goods at issue at dissimilar. He also criticises the Board of Appeal for having held that the enhanced distinctiveness, acquired through use, of the mark applied for was not relevant.

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

37      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.

38      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).

39      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).

40      It is in the light of those considerations that it must be examined whether the Board of Appeal was correct to find that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.

 The relevant public, the comparisons of the signs at issue and the inherent distinctiveness of the earlier mark

41      The applicant does not dispute the Board of Appeal’s assessments that, first, the relevant public was made up of the general public with an average level of attention, second, the signs at issue were identical and, third, the earlier mark had an average degree of distinctiveness.

 Comparison of the goods at issue

42      The applicant disputes the similarity found by the Board of Appeal between the soaps and shower gels covered by the earlier mark and the goods covered by the mark applied for.

43      In that connection, it must be borne in mind that, in assessing the similarity between 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 (see order of 8 May 2014, OHIM v Sanco, C‑411/13 P, not published, EU:C:2014:315, paragraph 39 and the case-law cited). Other factors may also be taken into account such as the distribution channels of the goods concerned (judgment of 10 February 2015, Boehringer Ingelheim International v OHIM – Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 58).

44      Last, the Court has already held that complementary goods or services 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 or for providing those services (see judgment of 24 September 2008, Oakley v OHIM – Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 52 and the case-law cited; judgment of 24 June 2014, Hut.com v OHIM – Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 24).

45      In the first place, the applicant complains that the Board of Appeal added elements to the list of goods at issue in order to help the intervener overcome their lack of similarity, rather than limiting itself to comparing the goods as described in the trade mark application and the notice of opposition.

46      However, that line of argument cannot succeed, because it flows from an incorrect reading of the contested decision. The Board of Appeal did not add elements to the list of goods at issue. It did no more than describe those goods in order to determine, in particular, their nature, their intended purpose and their method of use and therefore to take into account all the relevant factors relating to those goods, as required by the settled case-law cited in paragraph 43 above.

47      In the second place, the applicant submits, in essence, that the goods covered by the earlier mark for which proof of use has been adduced, that is, soaps and shower gels, cannot be regarded as similar to the goods covered by the mark applied for, as they do not share any of the relevant factors referred to in paragraph 43 above.

48      In that regard, it must be borne in mind that the Board of Appeal found, in paragraphs 73 to 75 of the contested decision, that the goods at issue are similar to at least an average degree, as both sets of goods were, first, intended to care for or beautify the body, second, were complementary in a daily beauty routine, third, shared the same distribution channels and, fourth, targeted the same public.

49      That finding is untainted by an error of assessment.

50      First, it is true that the goods covered by the mark applied for differ from those of the earlier mark in that they are strips, waxes or creams intended primarily to remove unwanted facial or body hair from the human body, while soaps and shower gels are intended to wash the human face or body. The fact remains that all those goods are applied to skin in order to, most often, protect and improve the appearance of the skin. The Court therefore concludes, without there being any need to consult an independent expert, that the goods at issue, as a result, share hygienic and cosmetic properties, and that the purpose of those goods is to beautify the human body.

51      In that connection, the Board of Appeal observed correctly, in paragraph 72 of the contested decision, that beautification is not obtained only by the use of traditional means, such as make-up or other cosmetics, but also through the use of products which, although they may be hygienic, also served beauty purposes. Accordingly, soaps and shower gels may be designed to limit dehydration of the skin as much as possible, thereby making skin more beautiful. The same goes for the goods covered by the mark applied for, which are used for beautification and hygiene purposes.

52      Second, the Court considers that there is a close connection between the soaps and shower gels covered by the earlier mark and the goods covered by the mark applied for, for the purposes of the case-law cited in paragraph 44 above, in so far as they are part, as observed by the Board of Appeal, of a daily beauty routine consisting of cleansing and nourishing the skin and removing undesirable hair from the skin.

53      That finding cannot be called into question by the applicant’s argument that soaps and shower gels do not play a role in removing hair and residue, since it is hair removal cream which acts via a chemical process. Even though soaps and shower gels in themselves do not remove hair, the fact remains that the goods covered by the mark applied for, and soaps and shower gels, are part of a daily beauty routine.

54      In any event, it is sufficient to note that it cannot be ruled out that in some sectors, such as those of goods intended for body and facial care, goods whose nature, purpose and method of use are different, quite apart from being functionally complementary, may be aesthetically complementary in the eyes of the relevant public (see, to that effect, judgment of 11 July 2007, Mülhens v OHIM – Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraph 35).

55      Third, the Court considers that the Board of Appeal was correct to find, in paragraph 75 of the contested decision, referring to the judgment of 13 June 2019, Pielczyk v EUIPO – Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM) (T‑398/18, not published, EU:T:2019:415), that the goods at issue shared the same distribution channels and targeted the same public in so far as they were sold in perfumeries, pharmacies and the same section of supermarkets and department stores. That finding cannot be called into question by the applicant’s argument that, in essence, beauty salons play a particular role in the distribution of hair removal products, which is not the case of soaps and shower gels. In that connection, it is sufficient to note that, even if, admittedly, it cannot be ruled out that part of the relevant public is able to purchase hair removal products in a beauty salon, the fact remains that all of the goods at issue are also freely accessible in perfumeries, pharmacies or the body hygiene sections of supermarkets and department stores.

56      As a result, having regard to the fact, inter alia, that the nature of the goods at issue is partly the same, that they are likely to be marketed via the same distribution channels and that they are complementary in a daily beauty routine, those considerations lead the Court to endorse the Board of Appeal’s finding that the goods at issue are similar to at least an average degree.

57      Moreover, having regard to the fact that the goods at issue are similar to at least an average degree and that it is not disputed that the signs at issue are identical and, moreover, that the earlier mark has an average degree of distinctiveness, the Court endorses the Board of Appeal’s finding that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 between the marks at issue for the purposes of the case-law cited in paragraphs 38 and 39 above.

58      That finding cannot be called into question by the applicant’s argument alleging enhanced distinctiveness, acquired through use, of the mark applied for. It is sufficient to note, similarly to EUIPO and the intervener, that, according to settled case-law, only the reputation of the earlier mark, and not that of the mark applied for, is to be taken into account in assessing whether there is a likelihood of confusion (see, to that effect, judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 84 and the case-law cited).  That case-law is consistent with the objective of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of Regulation 2017/1001), which is to provide adequate protection to holders of earlier rights against subsequent applications for identical or similar EU trade marks (see judgment of 20 January 2021, Palírna U Zeleného stromu v EUIPO – Bacardi (BLEND 42 FIRST CZECH BLENDED VODKA), T‑831/19, not published, EU:T:2021:20, paragraph 69 and the case-law cited).  The Board of Appeal therefore did not err in considering that the alleged distinctiveness, acquired through use, of the earlier mark was irrelevant in the present case for the purposes of assessing the likelihood of confusion.

59      It follows from the foregoing considerations that the third plea must be rejected and, consequently, the action in its entirety must be dismissed, without there being any need to, first, rule on the admissibility of the part of the applicant’s first head of claim seeking alteration of the decision of the Opposition Division and rejection of the opposition and, second, grant the applicant’s request for the Court to obtain an independent expert report.

 Costs

60      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 and a hearing was held, he 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 (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Mr Afaaq Ahmad Qozgar to pay the costs.

Delivered in open court in Luxembourg on 20 November 2024.

*      Language of the case: English.

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