JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
8 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark OmniSan – Earlier EU word mark Omnistrip – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑189/24,
Drinks Prod SRL, established in Păntășești (Romania), represented by I. Speciac, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and D. Stoyanova-Valchanova, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Paul Hartmann AG, established in Heidenheim (Germany),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, D. Petrlík (Rapporteur) and K. Kecsmár, Judges,
Registrar: V. Di Bucci,
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, Drinks Prod SRL, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 February 2024 (Case R 1226/2023-1) (‘the contested decision’).
Background to the dispute
2 On 2 November 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods inter alia in Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Hand-sanitising preparations; Antibacterial sprays, medicated talcum powder; Germicidal preparations [other than soap]; Antibacterial clay preparations; Cleansing solutions for medical use; Antiseptic body care preparations; sanitising wipes; fungicides; germicides; Sterilising preparations; Disinfectants for swimming pools; Disinfectants; Air sanitising preparations; Antiseptics; Sterilising solutions; Bactericides; Medicated soap; Alcohol for pharmaceutical purposes; Sanitising preparations for hospital use; Materials for dressings; Washes (disinfectant -) [other than soap]; Antiseptic cleansers; Disinfectants for medical instruments; Sanitising wash for fruit and vegetables; Sanitising wipes; Antibacterial wipes; First aid boxes, filled; Disinfectants for veterinary use; Disinfectants for medical use; Sanitisers for household use; Sterilising substances; Rubbing alcohol; First aid boxes sold filled; medicated plasters; Medicated toiletry preparations; Antimicrobial facewashes; Wipes for medical use; Alcohol swabs for medical purposes; Washes (Sterilising -); Disinfectants impregnated into tissues; Disinfectants for medical apparatus and instruments; Antibacterial preparations; Air deodoriser sprays’.
4 On 18 February 2021, Paul Hartmann AG 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, inter alia, on the EU word mark Omnistrip, registered on 5 May 2009 under number 7196587, covering goods in Class 5 corresponding to the following description: ‘Sanitary preparations for medical use; plasters, materials for dressings; disinfectants; hygienic bindings and bandages; suture strips for wounds’.
6 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).
7 On 12 April 2023, the Opposition Division upheld the opposition.
8 On 12 June 2023, 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 on the ground 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, in essence, that the Court should:
– annul the contested decision;
– order EUIPO to continue the registration proceedings for the mark applied for in respect of all the requested goods.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is held.
Law
The Court’s jurisdiction to deal with the applicant’s second head of claim
12 By its second head of claim, the applicant claims that the Court should order EUIPO to continue the registration proceedings for the mark applied for.
13 In that regard, it is sufficient to recall that, as EUIPO has noted, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
14 It follows that the applicant’s second head of claim must be rejected on grounds of lack of jurisdiction.
Substance
15 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It challenges the Board of Appeal’s conclusions concerning, first, the level of attention of the relevant public, second, the comparison of the goods at issue, third, the comparison of the marks at issue and, fourth, the global assessment of the likelihood of confusion.
16 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must 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).
The relevant public
20 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).
21 In the present case, in paragraphs 35 to 37 of the contested decision, the Board of Appeal stated that it was assessing the likelihood of confusion by reference to the perception of the German-speaking public. In addition, it noted that the relevant public was composed of the public at large and professionals in the medical and pharmaceutical sector and that that public displayed a level of attention ranging from average (for goods such as plasters) to high (for goods such as pharmaceuticals and pharmaceutical preparations).
22 The applicant does not challenge the definition of the relevant public adopted by the Board of Appeal. As regards the level of attention of that public, it merely states that that level is ‘significantly higher’ in respect of ‘disinfectants’ and ‘antiseptic products’, as that type of goods concerns the state of health of consumers.
23 It follows, first, that the applicant does not dispute the level of attention of the relevant public, as determined by the Board of Appeal, in respect of goods other than ‘disinfectants’ and ‘antiseptic products’.
24 With regard, second, to disinfectants and antiseptics, it is true that they fall under ‘sanitary preparations for medical use’, in respect of which the relevant public has a high level of attention. In so far as such goods are used for medical purposes, they necessarily have health implications for consumers, which justifies the view that their level of attention is high, in the same way as for pharmaceutical goods (judgment of 21 September 2017, Novartis v EUIPO – Meda (Zimara), T‑238/15, not published, EU:T:2017:636, paragraphs 69 and 70).
25 That being the case, there is nothing in the contested decision to support the view that the Board of Appeal accepted a lower level of attention of the relevant public for ‘disinfectants’ and ‘antiseptic products’.
26 The Board of Appeal found that the level of attention of the relevant public ranged from average to high. In addition, it is clear from paragraph 37 of the contested decision that the Board of Appeal relied on the premiss that the relevant public displays a high level of attention for goods which have important consequences for health, bearing in mind that it mentioned pharmaceuticals and pharmaceutical preparations only as examples. In so far as disinfectants and antiseptics for medical use have health implications for consumers, they must be considered to be covered by that premiss.
27 There is therefore no reason to call into question the Board of Appeal’s assessment concerning the level of attention of the relevant public.
The comparison of the goods
28 According to settled case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and 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).
29 In the present case, in paragraph 40 of the contested decision, the Board of Appeal affirmed the Opposition Division’s conclusion that the goods at issue, which were all in Class 5, were partly identical and partly similar, referring to the grounds of the Opposition Division’s decision and stating that the applicant presented no coherent arguments to challenge that conclusion.
30 In that regard, the Opposition Division found inter alia that the ‘first aid boxes’ covered by the mark applied for were at least similar to the ‘sanitary preparations for medical use’ covered by the earlier mark, as they could be produced by the same undertakings, be sold via the same channels of distribution and target the same public. In addition, the Opposition Division noted that the ‘air deodorising sprays’ covered by the mark applied for were similar to the ‘disinfectants’ covered by the earlier mark on the ground that, apart from their air purifying and smell neutralising function, they could also have disinfection functions. To that extent, those goods shared the same purpose and could be produced by the same type of undertaking, sold via the same channels of distribution and target the same relevant public.
31 The applicant disputes the similarity established in respect of three goods covered by the mark applied for, namely ‘first aid boxes, filled’, ‘first aid boxes sold filled’ and ‘air deodorising sprays’. In that regard, it claims that those goods are not produced by the same undertakings and are not sold via the same channels of distribution as the goods covered by the earlier mark. It submits, further, that these arguments ‘apply in what regards the rest of the goods designated by [the mark applied for]’.
32 EUIPO disputes the applicant’s arguments.
33 As regards the similarity between the ‘first aid boxes, filled’ and ‘first aid boxes sold filled’ covered by the mark applied for and the ‘sanitary preparations for medical use’ covered by the earlier mark, those goods are similar on account of the fact that they are complementary, given that first aid boxes often contain sanitary preparations, with the result that those goods may share manufacturers and distribution channels, bearing in mind that they can be sold inter alia in pharmacies (see, by analogy, judgment of 28 February 2024, Drinks Prod v EUIPO – Wolff and Illg (IGISAN), T‑164/23, not published, EU:T:2024:132, paragraph 47). It follows that the Board of Appeal correctly found that those goods were similar.
34 The same holds for the ‘air deodorising sprays’ covered by the mark applied for and the ‘disinfectants’ covered by the earlier mark. The former goods may contain chemicals for killing germs, similarly to disinfectants. The use and intended purpose of such goods therefore overlap to a certain extent, being related to cleaning and hygiene (see, by analogy, judgment of 28 February 2024, IGISAN, T‑164/23, not published, EU:T:2024:132, paragraph 44). Furthermore, the applicant has not submitted to the Court any specific evidence to challenge the Board of Appeal’s conclusion that those goods can be produced by the same manufacturers, have the same distribution channels and target the same public.
35 Lastly, in so far as the applicant merely maintains, without providing further details, that the arguments which it has raised in relation to the goods mentioned in paragraphs 33 and 34 above also apply to the other goods covered by the mark applied for, those arguments do not meet the requirements of clarity and precision laid down by the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which applies to proceedings before the General Court pursuant to the first paragraph of Article 53 of that Statute, and Article 177(1)(d) of the Rules of Procedure of the General Court (see, to that effect, judgment of 17 January 2019, ETI Gıda Sanayi ve Ticaret v EUIPO – Grupo Bimbo (ETI Bumbo), T‑368/18, not published, EU:T:2019:15, paragraph 19). Consequently, those arguments must be rejected as being inadmissible.
36 The Board of Appeal did not therefore make an error of assessment in confirming the Opposition Division’s conclusion that the goods at issue are partly identical and partly similar.
The comparison of the signs
37 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).
– The distinctive and dominant elements of the marks at issue
38 The Court recalls that, in order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited).
39 In addition, it must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he or she will identify the elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see judgment of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 28 and the case-law cited).
40 In the present case, the earlier mark is a word mark consisting of the single word element ‘omnistrip’.
41 The mark applied for is a figurative mark consisting of the word element ‘omnisan’ in dark blue, before which appears a blue cross with dark shading fading to light shading on the central part and the upper and right-hand struts, all surrounded by a very light blue oval outline.
42 In paragraph 43 of the contested decision, the Board of Appeal found that the earlier mark Omnistrip could be broken down into two word elements, namely the element ‘omni’, which the relevant public understood as meaning ‘all’ or ‘of all things’, and the element ‘strip’, the meaning of which in German was ‘plaster’. According to the Board of Appeal, the element ‘omni’ was of normal distinctive character because it had no clear, direct or specific descriptive meaning in regard to the goods at issue. The element ‘strip’ was descriptive of some of the goods, such as plasters, but not of other goods at issue. The Board of Appeal thus found that the term ‘omni’ was the most distinctive element in the earlier mark.
43 As far as the mark applied for is concerned, the Board of Appeal found, in paragraphs 44 to 46 of the contested decision, that the word element ‘omnisan’ was the dominant element of that mark and that such an element was, moreover, ‘far more distinctive’ than the figurative elements of the mark. Given the capitalisation of the first letters of the elements ‘omni’ and ‘san’, the relevant public would read them as separate words.
44 According to the Board of Appeal, the relevant public would understand the word ‘omni’ in the mark applied for, as in the earlier mark, as meaning ‘all’ or ‘of all things’, that meaning being prima facie distinctive for the goods at issue. As regards the element ‘san’, part of the relevant public, at least the professional public in the medical sector, is likely to associate it with the Latin word ‘sanus’, meaning ‘healthy’. Given that allusive nature, that element will be less distinctive vis-à-vis the goods at issue for that part of the relevant public. The Board of Appeal thus found that the part of the public who understand the term ‘san’ would perceive the word ‘omni’ as the most distinctive element of the mark applied for. For the rest of the public, the terms ‘omni’ and ‘san’ would be the most distinctive elements.
45 The applicant does not challenge the Board of Appeal’s conclusion that the relevant public will break down the word elements in the marks at issue into two elements, as was described in paragraphs 42 and 44 above.
46 By contrast, it claims, first, that the common element ‘omni’ lacks distinctive character on the ground that it is descriptive, given that it is a Latin general term and is frequently used in marks designating goods in Class 5. The Board of Appeal should not therefore have taken that element into consideration when analysing the similarity of the marks at issue.
47 In that regard, it is apparent from case-law that the mere fact that a term contained in a mark has a clear meaning is not sufficient to make it descriptive or to prove that it is devoid of distinctive character. Such a term must also have a sufficiently direct and specific relationship with the goods or services in question to enable the public concerned to perceive immediately, and without further reflection, a description of the goods and services in question or one of their characteristics (see judgment of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 47 and the case-law cited).
48 In the present case, it is not disputed that the element ‘omni’ will be understood, by a significant part of the relevant public at least, as meaning ‘all’ or ‘of all things’. Even for that public, however, such an element does not convey any meaning such as to enable it to perceive immediately, and without further reflection, a description of one of the characteristics of the goods in question. Consequently, that term cannot be considered to be devoid of distinctive character or to have weak distinctive character.
49 Furthermore, as regards the applicant’s argument that the weakly distinctive character of the term ‘omni’ is demonstrated by the existence on the market of numerous trade mark registrations containing that term to designate goods in Class 5, it is sufficient to note that the relevant factor for the purposes of contesting the distinctive character of an element is whether it is actually present on the market, and not in registers or databases (see, to that effect, judgment of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). The registration of a trade mark does not imply per se that it is actually used on the market or that it is used for all the goods covered by the registration at issue, which is why additional evidence of its actual use on the market is essential in that context. Consequently, the Board of Appeal was fully entitled to find, in essence, that the applicant had not established the presence on the market of the marks which it was claiming in order to demonstrate the lack of distinctive character of the element ‘omni’.
50 In those circumstances, it was reasonable for the Board of Appeal to find that the element ‘omni’ was not descriptive and that it had normal distinctive character for the goods at issue.
51 Second, the applicant complains that the Board of Appeal did not take sufficient account of the fact that the mark applied for contains several figurative elements which make it distinct from the earlier mark, namely the representation of the blue cross, the stylised typeface and the blue oval outline.
52 In that regard, it should be borne in mind that where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name than by describing the figurative element of the trade mark (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
53 The same conclusion must be drawn in the present case with regard to the word element ‘omnisan’ in the mark applied for, which is more distinctive than its figurative elements. As the Board of Appeal stated in paragraph 45 of the contested decision, the representation of the blue cross in that mark has weak distinctive character, given that such crosses are commonly associated with health-related goods. Furthermore, the other figurative elements of the mark applied for, namely the slightly stylised typeface and the blue oval outline, are purely decorative and therefore devoid of distinctive character. Consequently, the ability of the figurative elements of the mark applied for to make it distinct from the earlier mark is limited.
54 Third, the applicant cannot claim that the stylised cross occupies a dominant position in the mark applied for. As the Board of Appeal noted in paragraph 44 of the contested decision, the representation of the blue cross in the mark applied for is smaller than the word element ‘omnisan’, with the result that it will not attract more attention than the word element. The same holds for the other figurative elements, namely the stylised typeface and the blue oval outline, which occupy only a secondary position in that mark. In those circumstances, the word element ‘omnisan’ must be considered to be dominant within that mark.
55 In the light of the foregoing, the Board of Appeal did not err in its assessment of the distinctive and dominant elements of the marks at issue.
– The visual comparison
56 The Board of Appeal found, in paragraph 47 of the contested decision, that the marks at issue were visually similar to an average degree. It stated that those marks coincided in the first word element ‘omni’, which was also followed by the letter ‘s’. Furthermore, the visual impact created by the differences which exist between the marks, namely the figurative elements present in the mark applied for and the different final letters in each mark (‘a’ and ‘n’ as opposed to ‘t’, ‘r’, ‘i’ and ‘p’), was not sufficient to outweigh the similarity created by the fact that the word elements of those marks coincided.
57 The applicant claims that the mark applied for contains several elements which make it distinct from the earlier mark, namely the stylisation of the word element, the oval outline, the combination of upper and lower-case letters and the stylised cross which occupies a dominant position in the mark. In addition, the Board of Appeal should not have taken into consideration the element ‘omni’ for the purposes of the visual comparison of the marks at issue as it is descriptive.
58 EUIPO disputes the applicant’s arguments.
59 It should be noted in this regard that the word elements ‘omnistrip’ and ‘omnisan’ coincide in the prefix ‘omni’, which is followed by the letter ‘s’, and that those elements differ in the suffixes ‘an’ and ‘trip’. Furthermore, the mark applied for differs from the earlier mark by the presence of figurative elements, namely the representation of a blue cross, the blue typeface, the combination of upper and lower-case letters and the oval outline encompassing all the elements comprising that mark.
60 The presence of the identical element ‘omni’ and of the letter ‘s’ within the marks at issue is likely to have a decisive impact on the perception by the relevant public and outweighs the visual differences between the marks, namely the different suffixes and the figurative elements included in the mark applied for.
61 The element ‘omni’ attracts the attention of the relevant public by virtue of its relative length within the marks at issue, its distinctive character and its positioning at the beginning on the marks. Furthermore, as has already been stated in paragraphs 51 to 54 above, the figurative elements of the mark applied for have only secondary importance in the overall impression given by that mark. Those elements do not have such a strongly distinctive stylisation as to divert the attention of the relevant public from the word element ‘omni’ followed by the letter ‘s’ and thereby preclude the visual similarity of the marks at issue.
62 In that regard, the applicant’s argument that the element ‘omni’ should not have been taken into consideration in the comparison of the marks at issue on account of its descriptiveness must be rejected because, as was noted in paragraph 50 above, that element is not descriptive of the goods at issue.
63 Consequently, the Board of Appeal was fully entitled to find that the marks at issue are visually similar to an average degree.
– The phonetic comparison
64 The Board of Appeal found, in paragraph 48 of the contested decision, that the marks at issue were phonetically similar to a high degree since their first two syllables – the syllables ‘om’ and ‘ni’ – were identical and their third syllable began with the same sound, ‘s’. It also found that it was unlikely that the cross symbol in the mark applied for would be pronounced.
65 The applicant claims that the pronunciation of the marks at issue differs in so far as the last syllable of the earlier mark is different from the last syllable of the mark applied for.
66 EUIPO disputes the applicant’s arguments.
67 It should be noted in that regard, first, that the first two syllables of the marks at issue are phonetically identical (‘om’ and ‘ni’). Second, while the last syllable of those marks is different, it begins with the same sound (‘s’). Lastly, although that last syllable is pronounced differently, namely ‘san’ and ‘strip’, that difference only partially cancels out the phonetic similarities resulting from the sounds ‘om’, ‘ni’ and ‘s’.
68 That being the case, contrary to the finding made by the Board of Appeal, that difference means that the degree of phonetic similarity between the marks at issue is only average and not high.
– The conceptual comparison
69 The Board of Appeal found, in paragraph 49 of the contested decision, that the marks at issue were conceptually similar to an average degree. The relevant public understood their common element ‘omni’ as referring to an identical concept, that is to say, as meaning ‘all’ or ‘of all things’. Due to the presence of the identical word ‘omni’, the marks were similar to an average degree even for the relevant public who understood that the words ‘strip’ and ‘san’ referred to different concepts.
70 The applicant claims that the marks at issue are not conceptually similar, given that the term ‘omnisan’ in the mark applied for refers to a fantasy concept, while the word ‘omnistrip’ in the earlier mark will be understood by the relevant public as referring to a ‘long, flat, narrow piece’.
71 EUIPO disputes the applicant’s arguments.
72 First of all, the applicant has not seriously disputed that the terms ‘omnisan’ and ‘omnistrip’, taken as a whole, do not have any particular meaning for the relevant public. In those circumstances and in the light of the case-law cited in paragraph 39 above, the Board of Appeal correctly analysed the conceptual similarity of the individual elements making up those terms.
73 Second, as has already been stated in paragraphs 42 and 44 above, the relevant public will break down the terms ‘omnistrip’, the only element in the earlier mark, and ‘omnisan’, in the mark applied for, as including, on the one hand, the prefix ‘omni’ and, on the other, the suffixes ‘strip’ and ‘san’ respectively.
74 Lastly, while it is true that the suffixes ‘strip’ and ‘san’ can be understood by a part of the relevant public as each referring to a different concept, the fact remains that the common element in the marks at issue, namely ‘omni’, will be understood by the relevant public as alluding to an identical concept, namely ‘all’ or ‘of all things’ (see paragraph 48 above). Moreover, the applicant itself accepts that the term ‘omni’ has that meaning.
75 In those circumstances, it must be held that, as the Board of Appeal found, the marks at issue are conceptually similar to an average degree.
76 That conclusion is not called into question by the applicant’s argument that the term ‘omnistrip’ in the earlier mark will be understood by the relevant public as referring to a ‘long, flat, narrow piece’, whereas the term ‘omnisan’ in the mark applied for refers to a fantasy concept. It is true that the term ‘omnisan’ in the mark applied for does not have any clear, particular meaning as such. However, the same holds for the term ‘omnistrip’ in the earlier mark. The meaning which the applicant attributes to the earlier mark, namely a ‘long, flat, narrow piece’, is not conveyed by the term ‘omnistrip’ as such, but by the element ‘strip’ alone. The mere fact that the two marks, taken as a whole, are fanciful does not alter the fact that, in accordance with the case-law cited in paragraph 39 above, the relevant public will break down those marks into word elements which, for it, suggest a concrete meaning or resemble words known to it and that it will attribute a clear meaning to one of those elements which is common to the marks, namely the element ‘omni’. The fact that the element ‘strip’ in the earlier mark also has a clear meaning for part of the relevant public cannot cancel out the conceptual similarity between the marks at issue resulting from the common element ‘omni’.
77 It must therefore be held that the Board of Appeal did not make an error of assessment when it analysed the conceptual similarity of the marks at issue.
The distinctive character of the earlier mark
78 In paragraph 51 of the contested decision, the Board of Appeal held that the earlier mark had normal distinctive character, given that the element ‘omni’ did not have any direct relevant connection with the goods at issue, nor did the combination of the elements ‘omni’ and ‘strip’.
79 The applicant challenges that conclusion, claiming that the earlier mark lacks distinctiveness or, at least, has very low distinctiveness. First, its dominant element, ‘omni’, is a general term which thus lacks distinctiveness and, moreover, is frequently used to designate goods in Class 5. Second, the term ‘strip’ means ‘a long, flat, narrow piece’ and is descriptive for ‘wound closure strips’, with the result that the relevant public will understand the earlier mark as referring to goods intended for the treatment of open wounds.
80 EUIPO disputes the applicant’s arguments.
81 As has already been found in paragraphs 48 and 49 above and contrary to the applicant’s claim, the first element of the earlier mark, the term ‘omni’, is distinctive for the goods at issue. That element is therefore capable of conferring distinctive character on the earlier mark as a whole.
82 Furthermore, the second element of the earlier mark, the term ‘strip’, is descriptive of certain goods covered by that mark, such as plasters. However, because of the presence of the distinctive element ‘omni’, that does not make the earlier mark descriptive as a whole.
83 In any event, as the Board of Appeal found in paragraph 43 of the contested decision, the term ‘strip’ is not descriptive in respect of all the goods covered by the earlier mark, but only in respect of some of them, which is, moreover, not disputed by the applicant.
84 In the light of the foregoing, the Board of Appeal correctly concluded that the earlier mark, assessed as a whole, has normal distinctive character.
The likelihood of confusion
85 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
86 The Board of Appeal found, in paragraph 52 of the contested decision, that there was a likelihood of confusion between the marks at issue for the relevant German-speaking public, displaying even a high level of attention in that regard, in the light of the normal intrinsic distinctive character of the earlier mark, the identity and similarity of the goods at issue, the average visual similarity, the high phonetic similarity and the average conceptual similarity of those marks. According to the Board of Appeal, that conclusion is borne out by the fact that, for some of the relevant public at least, the prefix ‘omni’ plays a distinctive and independent role in the earlier mark, equally plays such a role in the mark applied for and indeed is placed as the first word in each mark.
87 The applicant challenges that conclusion. As its principal claim, it argues that there is no likelihood of confusion as the marks at issue and the goods covered by them are not similar. In the alternative, it submits that those marks coincide in an element which is weakly distinctive, namely ‘omni’, and that the mark applied for has other relevant elements, such as the word element ‘san’ and the figurative elements. Where the marks coincide in a weak element, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists, with the result that it can exist only if the marks at issue have ‘a very high degree of identity’, which is not the case here.
88 EUIPO disputes the applicant’s arguments.
89 First, as was stated in paragraphs 33 to 36 above, the goods at issue are partly identical and partly similar.
90 Second, as was stated in paragraphs 56 to 77 above, the marks at issue are visually, phonetically and conceptually similar to an average degree.
91 Lastly, as is clear from paragraphs 23 to 27 and 84 above, the earlier mark has normal distinctive character and the level of attention of the relevant public ranges from average to high.
92 In those circumstances and given the interdependence between the similarity of the goods and the similarity of the marks at issue, it must be held, in the context of a global assessment, having regard to the level of attention of the relevant public and the normal intrinsic distinctive character of the earlier mark, that the Board of Appeal correctly concluded that there was a likelihood of confusion.
93 Consequently, in the light of all the above considerations, the single plea in law relied on by the applicant must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
94 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.
95 In the present case, although the applicant has been unsuccessful, EUIPO has applied for costs to be awarded against it only in the event that a hearing is convened. Since no hearing was held, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Kornezov | Petrlík | Kecsmár |
Delivered in open court in Luxembourg on 8 January 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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