Marcinkowska-Dec v EUIPO - Ismailova (DESSI) (EU trade mark - Judgment) [2024] EUECJ T-472/23 (12 June 2024)

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(EU trade mark – Invalidity proceedings – EU figurative mark DESSI – Earlier EU word mark DESHI – Relative ground for invalidity – Likelihood of confusion – Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001)

Małgorzata Marcinkowska-Dec, residing in Kraków (Poland), represented by A. Witońska-Pakulska, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,

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

Aza Ismailova, residing in Herselt (Belgium), represented by M. Zoebisch and J. Wachinger, lawyers,

composed of D. Spielmann, President, R. Mastroianni and T. Tóth (Rapporteur), Judges,

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,

1 By her action under Article 263 TFEU, the applicant, Ms Małgorzata Marcinkowska-Dec, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 March 2023 (Case R 1738/2022-2) (‘the contested decision’).

2 On 27 May 2021, the intervener, Ms Aza Ismailova, filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered further to an application filed on 28 August 2019 in respect of the following figurative sign:

3 The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 3 and 35 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.

4 The application for a declaration of invalidity was based on the earlier EU word mark DESHI, which was registered on 20 December 2018 and covers goods in Classes 3, 8, 21 and 26.

5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a), read in conjunction with 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).

6 On 15 July 2022, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity on the basis of Article 60(1)(a), read in conjunction with Article 8(1)(b) of Regulation 2017/1001, in respect of all the goods and services covered by the contested mark except for ‘advertising services relating to cosmetics’ in Class 35.

7 On 7 September 2022, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

8 By the contested decision, the Board of Appeal dismissed the appeal in its entirety. In essence, having found that the relevant territory was that of the European Union and that the relevant public consisted of the general public and professionals with an average level of attention, the Board of Appeal held, first, that the goods and services in question were either identical or similar to varying degrees and, secondly, that, between them, the signs at issue had an above-average degree of visual similarity, as well as an above-average degree of phonetic similarity for the English-speaking and German-speaking public, while being phonetically identical for the Spanish-speaking public. It concluded that, in the context of the global assessment of the likelihood of confusion, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

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

– order the applicant to pay the costs, including those incurred in the proceedings before EUIPO.

12 In support of her action, the applicant relies on a single plea in law, alleging infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation. In essence, she criticises the Board of Appeal, in the first place, for having made errors in the assessment of the distinctive and dominant elements of the signs at issue as well as in the assessment of their similarity and, in the second place, for having made errors in the global assessment of the likelihood of confusion.

14 Under the combined provisions of Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001, an EU trade mark is to be declared invalid if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

15 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).

16 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).

17 Furthermore, in order to find that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is not necessary to find that that likelihood exists for the whole of the relevant public. It is clear that a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraphs 49 and 50 and the case-law cited).

The relevant public, the comparison of the goods and services in question and the inherent distinctiveness of the earlier mark

18 In paragraphs 22 to 24 and 40 of the contested decision, the Board of Appeal found that, in the assessment of the existence of a likelihood of confusion, it was necessary in the present case to take into consideration primarily the perception of the general public and of Spanish professionals. In addition, in paragraph 29 of that decision, it noted that the goods and services covered by the marks in question were either identical or similar to varying degrees.

20 The parties also do not dispute the finding of the Board of Appeal, made in paragraph 72 of the contested decision, that the earlier mark has a normal degree of inherent distinctiveness.

21 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 proceed to analyse 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).

22 In addition, in order to assess the degree of similarity between the marks concerned, the degree of visual, phonetic or conceptual similarity between them must be determined and, where appropriate, the importance to be attached to those different elements should be evaluated, taking account of the category of goods or services in question and the circumstances in which they are marketed (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 27).

23 In the present case, before addressing the question of the similarity of the signs at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those signs carried out by the Board of Appeal.

24 According to the case-law, for the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).

25 More specifically, where a mark consists of word and figurative elements, the former are, in principle, more distinctive that the latter, because the average consumer will more readily refer to the good in question by citing the name of the mark than by describing the figurative element of that mark (see judgment of 20 September 2019, The Logistical Approach v EUIPO – Idea Groupe (Idealogistic Compass Greatest care in getting it there), T‑716/18, EU:T:2019:642, paragraph 48 (not published) and the case-law cited).

26 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; see, also, judgment of 13 December 2012, Natura Selection v OHIM – Ménard (natura), T‑461/11, not published, EU:T:2012:693, paragraph 45 and the case-law cited).

27 While it is true that the overall impression conveyed to the relevant public by a complex mark may, in certain circumstances, be dominated by one or more of its components, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where a component of a complex mark is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that the other component or components of that mark are negligible in the overall impression created by it (see judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43 and the case-law cited).

28 However, the fact that an element is not negligible does not mean that it is dominant, just as the fact that an element is not dominant by no means implies that it is negligible (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 44).

29 In that regard, in paragraphs 33 to 49 and 72 of the contested decision, the Board of Appeal found that the earlier word mark DESHI was meaningless for the relevant public and had a normal distinctive character. As for the contested mark, having found that it was composed of a word element and a figurative element, both of which had a distinctive character, the Board of Appeal took the view that, despite the characteristics of the figurative element, the word element was capable of having a stronger impact on the relevant public than the figurative element.

30 In essence, the applicant submits that the Board of Appeal made an error of assessment by according greater weight to the word element than to the figurative element of the contested mark. According to the applicant, the highly stylised nature, the colour, the position, the use of a bold font and, accordingly, the size of the figurative element are such as to divert the attention of the relevant public from the word element located in the lower part of that mark. The applicant adds that, although the Board of Appeal referred several times to the particular role played by the figurative element, it failed to explain the reasons why the word element had a stronger impact on consumers than the figurative element. Lastly, the applicant complains that the Board of Appeal did not take into consideration the type of goods, the way in which they are being sold or the fact that the choice of cosmetics is mainly made visually when it was determining the dominant element of the contested mark.

32 From the outset, it is necessary to reject the argument that the Board of Appeal did not explain the reasons why the word element of the contested mark had a stronger impact on consumers than the figurative element since it is based on a partial and erroneous reading of the contested decision.

33 First of all, the Board of Appeal described the elements which make up the contested mark and determined their distinctive character. In paragraph 41 of the contested decision, it found that that mark consisted of the word element ‘dessi’, written in slightly stylised, upper-case gold letters where the initial letter ‘d’ is represented with an unfinished line. In paragraph 42 of that decision, it found that that element was meaningless and had a distinctive character. As for the golden figurative element located above the word element, the Board of Appeal found that it could be perceived either as a fully abstract element or as two intertwined letters ‘d’ and that it had a distinctive character since it had no connection with the goods and services covered. Next, in paragraphs 47 and 48 of the contested decision, the Board of Appeal found that, despite the characteristics and position of the figurative element within the contested mark, the word element was capable of having a stronger impact on the relevant public than the figurative element. In reaching that conclusion, it relied on the fact that, where signs consist of both word and figurative elements, the word element of the sign generally has a stronger impact on the consumer than the figurative element since the public does not tend to analyse signs and will more easily refer to conflicting signs by their word elements than by the description of their figurative elements. Lastly, in paragraph 49 of the contested decision, the Board of Appeal completed its analysis by stating that the stylisation and the colour of the contested mark were merely decorative, with the result that the relevant public would not attribute any major significance to them.

34 Contrary to what is claimed by the applicant, those findings of the Board of Appeal contain no errors of assessment. The Board of Appeal was correct to find, first, that the elements which make up the contested mark both had a distinctive character and, secondly, that the word element would attract more attention from the relevant public than the figurative element, without the latter element being negligible within the meaning of the case-law cited in paragraph 27 above.

35 That finding cannot be called into question by the applicant’s argument relating to marketing conditions. It is sufficient to note that, according to settled case-law, such conditions are to be taken into account at the stage of the overall assessment of the likelihood of confusion and not at that of the assessment of the similarity of the signs at issue (see judgment of 12 October 2022, MCO (IP) v EUIPO – C8 (C2 CYPRUS CASINOS), T‑460/21, not published, EU:T:2022:623, paragraph 48 and the case-law cited).

36 In paragraphs 50 to 58 of the contested decision, the Board of Appeal found that the marks in question were visually similar to an above-average degree. In reaching that conclusion, the Board of Appeal noted that the signs at issue coincided in the sequence of letters ‘d’, ‘e’, ‘s’ and ‘i’, that is to say in four out of five letters placed in the same order, and that they differed in their respective fourth letters, namely ‘h’ and ‘s’, as well as in the figurative element of the contested mark, which was not present in the earlier mark. However, it found that, since the word element of the contested mark would have a stronger impact on the relevant public than the figurative element, the latter could not significantly offset the similarity created by the coincidence of the sequence of letters ‘d’, ‘e’, ‘s’ and ‘i’.

37 The applicant challenges that assessment on the part of the Board of Appeal. In essence, she claims that, while it is true that the word element of a sign has, in principle, a stronger impact on the consumer than its figurative element, that is not the case in the cosmetic industry because of the conditions under which the goods or services are marketed.

39 As a preliminary point, it must be borne in mind that, according to settled case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see paragraph 21 above). The average consumer only rarely has the chance to make a direct comparison between the different signs but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited). Moreover, it is the overall impression created by the marks in question that must be taken into account (judgment of 12 November 2009, Spa Monopole v OHIM – De Francesco Import (SpagO), T‑438/07, EU:T:2009:434, paragraph 23).

40 In the present case, it is, admittedly, true that the signs at issue coincide in four out of five letters and that they are therefore partially identical such as to create a certain impression of visual similarity in the mind of the relevant public. However, the fact remains that the difference introduced by the figurative element, without going so far as to introduce a visual dissimilarity between the signs at issue, lessens their visual similarity. Although that element may play a less important role than the word element in distinguishing the goods and services in the mind of the relevant public, it is reasonable to expect that that public may remember that difference in the imperfect picture it will retain.

41 It follows that, in the light of the characteristics of the elements which make up the marks in question and irrespective of the marketing conditions which are not a relevant factor for the purpose of comparing the signs, it must be concluded that there is an average visual similarity between the signs at issue when they are taken as a whole. The Board of Appeal therefore erred in finding that there was an above-average visual similarity.

42 In paragraphs 59 to 63 of the contested decision, the Board of Appeal found that the structure, rhythm and intonation of the word elements of the marks in question were the same. Since the difference in pronunciation between the group of consonants ‘sh’ and the consonant ‘s’ is not very strong in English or German, the Board of Appeal concluded that the signs had an above-average degree of phonetic similarity for the English-speaking and German-speaking public. It also found that the letter ‘h’ was not pronounced in Spanish and that, therefore, the signs were phonetically identical for the Spanish-speaking public.

43 In addition, in paragraphs 64 and 65 of the contested decision, the Board of Appeal found that, since the signs at issue were meaningless for the relevant public, it was not possible to compare them conceptually.

44 Those findings, which are not, moreover, disputed by the applicant, are correct.

45 If follows from the foregoing that, contrary to what the Board of Appeal found, the marks in question have only an average degree of visual similarity and an above-average degree of phonetic similarity for the English-speaking and German-speaking public, while being phonetically identical for the Spanish-speaking public. The fact remains that, in a global assessment and in the light of the fact that a conceptual comparison of those marks is irrelevant as regards the relevant public, it must be concluded that those marks are similar for that public.

46 For all practical purposes, it should be observed that the error of the Board of Appeal regarding the visual comparison of the marks cannot suffice to annul the contested decision since the similarity of the signs is only one of the factors to be taken into account in the global assessment of the likelihood of confusion. It is therefore necessary to ascertain whether, where there is a visual and phonetic similarity between conflicting signs, it is possible to find that there is a likelihood of confusion (see, by analogy, judgment of 20 October 2011, Poloplast v OHIM – Polypipe (P), T‑189/09, not published, EU:T:2011:611, paragraph 85).

47 In essence, the applicant claims that, by not according sufficient importance to the visual impression given by the marks in question, and, in particular, to the figurative element of the contested mark, the Board of Appeal made an error of assessment of the likelihood of confusion. According to the applicant, the differences between those marks, in particular visually, preclude the possibility that consumers may think that the goods in question come from the same undertaking or from economically linked undertakings when sold under the marks in question.

48 According to settled case-law, 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, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

49 It should be recalled that the Board of Appeal carried out a global assessment of the relevant factors. In paragraphs 74 and 75 of the contested decision, taking into account the identity or similarity of the goods and services covered by the signs at issue, their visual and phonetic similarity and the normal distinctive character of the earlier mark, it found that there was a likelihood of confusion in respect of those goods and services within the meaning of Article 8(1)(b) of Regulation 2017/1001.

50 In the present case, it follows from the foregoing that, first, the goods and services in question are aimed at the general public and at the professional public displaying an average level of attention; secondly, the goods and services in question are identical or similar; thirdly, the signs at issue are, overall, similar; and, fourthly, the earlier mark had a normal distinctive character.

51 It follows that, in the context of the global assessment of the likelihood of confusion, there is, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Therefore, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion.

52 That conclusion is not invalidated by the argument that, in essence, the Board of Appeal did not accord sufficient importance to the visual impression given by the marks in question, and, in particular, to the figurative element of the contested mark. It is sufficient to note in that regard, as is apparent from paragraphs 32 to 45 above, that the Board of Appeal was correct to find that the word element of the contested mark would attract more attention from the relevant public than the figurative element and that the differences introduced by the figurative element were not capable of eliminating the visual and phonetic similarity of the signs at issue.

53 Furthermore, the applicant’s argument based on the conditions under which the goods and services in question were marketed cannot succeed either. As the intervener correctly notes, it must be observed that those goods and services are not sold exclusively on a self-service basis, but can be sold by oral consultation, in particular in pharmacies or cosmetic shops. Consequently, it cannot validly be argued that it is necessary to accord, in the present case, more weight to the visual aspect of the marks in question when assessing the likelihood of confusion.

54 Having regard to all the foregoing considerations, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

55 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.

56 Since the applicant has been unsuccessful, she must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.

2. Orders Ms Małgorzata Marcinkowska-Dec to bear her own costs and to pay those incurred by Ms Aza Ismailova;

3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Marcinkowska-Dec v EUIPO - Ismailova (DESSI) (EU trade mark - Judgment) [2024] EUECJ T-472/23 (12 June 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T47223.html Cite as: EU:T:2024:374, ECLI:EU:T:2024:374, [2024] EUECJ T-472/23

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