Pich-Aguilera Molins v EUIPO - de Puig Arboli (Carmen says) (EU trade mark - Judgment) [2024] EUECJ T-1134/23 (20 November 2024)

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( EU trade mark - Opposition proceedings - Application for the EU figurative mark Carmen says - Earlier national figurative mark del Carmen - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 - Reimbursement of representation costs - Article 109 of Regulation 2017/1001 )

Enrique Pich-Aguilera Molins, residing in Olesa de Montserrat (Spain), represented by E. Zamora Martínez, lawyer,

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

composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos (Rapporteur) and B. Ricziová, 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 his action under Article 263 TFEU, the applicant, Mr Enrique Pich-Aguilera Molins seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 September 2023 (Case R 2185/2022-2) (‘the contested decision’).

2 On 24 March 2021, the applicant filed with EUIPO an application for registration of an EU trade mark for the following figurative sign:

3 The mark applied for covered goods and services in Classes 24, 25 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, and correspond, inter alia, for Classes 25 and 35, to the following description:

– Class 25: ‘Inner soles; visors; clothing; ready-made clothing; woven clothing; footwear; headgear’;

– Class 35: ‘Online ordering services; retail services in relation to textile goods, and substitutes for textile goods; retail services in relation to textiles; wholesale services in relation to textile goods, and substitutes for textile goods; wholesale services in relation to textiles; catalogue retail services in relation to textile goods, and substitutes for textile goods; catalogue retail services in relation to textiles; online retail services in relation to textile goods, and substitutes for textile goods; online retail services in relation to textiles; mail order retail services in relation to textile goods, and substitutes for textile goods; mail order retail services in relation to textiles; import and export services’.

4 On 21 June 2021, Ms María del Carmen de Puig Arbolí filed a notice of opposition to registration of the mark applied for, in particular, in respect of the goods and services referred to in paragraph 3 above.

5 The opposition was based on the earlier Spanish figurative mark represented below:

6 The goods and services covered by the earlier mark were in Classes 25 and 35 and corresponded, for each of those classes, to the following description:

– Class 35: ‘Wholesales, retail sales or through global computer networks, and import and export of clothing, footwear and headgear’.

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 On 15 September 2022, the Opposition Division in part upheld the opposition in respect of the goods and services referred to in paragraph 3 above.

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

10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the Opposition Division had correctly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the goods and services in question.

– declare that registration of the mark applied for in respect of the goods and services in question should proceed;

– order EUIPO and the other party to the proceedings before the Board of Appeal of EUIPO to pay the costs relating to the three proceedings concerning Case R 2185/2022-2, which includes all of the costs relating to the opposition proceedings B003149182, to the proceedings before the Board of Appeal R 2185/2022-2 and to the proceedings before the Court.

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

13 As regards the applicant’s second head of claim, it should be noted that that head of claim seeks, in essence, that the Court declare the mark applied for be registered in respect of all the classes applied for. In that regard, it is sufficient to bear in mind that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue declaratory judgments (see, to that effect, order of 9 December 2003, Italy v Commission, C‑224/03, not published, EU:C:2003:658, paragraphs 20 and 21, and judgment of 4 February 2009, Omya v Commission, T‑145/06, EU:T:2009:27, paragraph 23). It follows that the applicant’s second part of the second head of claim must be rejected on the ground of lack of jurisdiction.

14 In support of the action, the applicant relies on three pleas in law, alleging, first, the existence of a ‘manifest error of assessment’ as regards the conceptual comparison of the two marks at issue; second, infringement of Article 8(1)(b) of Regulation 2017/1001; and, third, infringement of Article 109 of that regulation.

15 In so far as the first two pleas largely overlap, the Court considers it appropriate to examine them together.

The first and second pleas, alleging, respectively, the existence of a ‘manifest error of assessment’ and infringement of Article 8(1)(b) of Regulation 2017/1001

16 The applicant submits, in essence, that there is no likelihood of confusion on the part of the relevant public in respect of the goods and services in question within the meaning of Article 8(1)(b) of Regulation 2017/1001.

18 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 two 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.

19 According to settled case-law, 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 marks 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 marks 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).

20 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).

21 In the present case, the Board of Appeal found, in paragraphs 16 to 20 of the contested decision, that, since the earlier mark is a Spanish mark, for the purposes of the assessment of the likelihood of confusion, the general public and the professional public of Spain, at which the goods and services in question were targeted should be taken into consideration, which, moreover, the applicant does not dispute. The level of attention of the relevant public, which varies from average to high is also not disputed by the applicant.

22 The applicant does not dispute the Board of Appeal’s finding, set out in paragraph 15 of the contested decision, that the goods and services covered by the two marks at issue are identical or similar to varying degrees.

23 As the Court has repeatedly held, 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).

24 The applicant criticises the Board of Appeal for having erred in finding that the signs at issue had a certain conceptual similarity, that they had an average degree of visual similarity and that they were phonetically highly similar, due to the mere presence of the common word element ‘carmen’.

25 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.

26 It follows, in particular, from paragraphs 27 to 28 and 31 to 32 of the contested decision that the Board of Appeal assessed the similarity of the signs at issue by taking the view, in essence, that they both contained the same dominant element, namely the word element ‘carmen’ which has an average degree of distinctive character.

27 More specifically, as regards the earlier mark, the Board of Appeal found, in paragraph 27 of the contested decision, that, in the first place, its figurative element representing a drop of water, which resembles a black paisley design, namely a teardrop-shaped motif with a curved upper end, is not dominant owing to its common stylisation, its unaligned and isolated position and its size. In addition, the Board of Appeal found, in paragraph 31 of the contested decision, that that figurative element had very little, if any, distinctive character, since it was widely used in the textile and fashion sector. In the second place, as regards the word elements, it stated that, although the element ‘del’ was not negligible, the word element ‘carmen’ appeared as the most visually eye-catching element due to its larger size and central position.

28 As regards the mark applied for, the Board of Appeal found, in paragraph 28 of the contested decision, that its element ‘carmen’ was dominant, inasmuch as it was written in bold, relatively standard title-case letters and it was larger in size, whereas the second word element ‘says’ was less visible and appeared in a stylised handwritten font, in a thin line and of a smaller size. In addition, the Board of Appeal noted, in paragraph 32 of the contested decision, that that word element had a secondary place in terms of distinctive character in relation to the element ‘carmen’, since it refers to the mere factual description of a common action performed by a person named Carmen.

29 Therefore, as regards the marks at issue, the Board of Appeal found that the term ‘carmen’ was their dominant and most distinctive element. Furthermore, it confirmed the Opposition Division’s position that, since it was not meaningfully related to the goods and services in question, the term ‘carmen’ had, in the present case, an average degree of distinctive character.

30 In his submissions before the Court, the applicant disputes, in essence, those findings of the Board of Appeal. In that respect, first, he claims that the word ‘carmen’ is a term which is widely used in all aspects of Spanish society, economy and culture, with the result that it only has a low degree of distinctive character. Second, he argues that the other elements of the two marks at issue, namely the element ‘del’, the figurative element of the earlier mark representing a drop of water and the element ‘says’ are not negligible in the overall assessment of those marks.

31 In that respect, it should be borne in mind that, as follows from settled case-law, the distinctive character of an element making up a mark depends on 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 11 October 2023, Flowbird v EUIPO – APCOA Parking Holdings (FLOWBIRD), T‑296/22, not published, EU:T:2023:613, paragraph 79 and the case-law cited).

32 Moreover, to establish the dominant character of an element making up a mark it is necessary to examine whether or not the overall impression conveyed to the relevant public by that mark is dominated by one or several elements of which it is composed. It is only if all the other elements making up the mark are negligible that the assessment of the similarity of the signs at issue can be carried out solely on the basis of the dominant element (see judgment of 21 December 2022, Tradición CZ v EUIPO – Rivero Argudo (TRADICIÓN CZ, S.L.), T‑250/19, not published, EU:T:2022:838, paragraph 51 and the case-law cited).

33 It also follows from the case-law of the Court that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods or services in question by quoting the name of that mark than by describing the figurative element (see judgment of 11 October 2023, FLOWBIRD, T‑296/22, not published, EU:T:2023:613, paragraph 80 and the case-law cited).

34 In the present case, it must be observed that, as EUIPO contends, the word ‘carmen’ is the dominant element of the two marks at issue. It occupies a central position in those marks and is larger in size than the element ‘del’, the figurative element of the earlier mark representing a drop of water and the element ‘says’, which play a secondary role on account of their respective size and position in the marks at issue. Moreover, as regards the distinctive character of the element ‘carmen’, the applicant did not specifically rely on or establish a significant link between the word ‘carmen’ and the goods and services in question. Accordingly, it has not been established that the Board of Appeal’s finding that that term had an average degree of distinctive character is incorrect.

35 In the light of the foregoing, it is not established that the Board of Appeal’s assessments concerning the dominant and distinctive elements of the two marks at issue are incorrect.

36 The Board of Appeal found, in paragraph 33 of the contested decision that, visually, the two marks coincided having regard to the word element ‘carmen’ which was the most distinctive and visually dominant element in the two signs at issue and which, in both cases, was written in bold and in rather standard title-case letters. According to the Board of Appeal, the signs at issue differed, in the first place, having regard to the word element ‘del’ of the earlier mark and to its figurative element representing a drop of water and, in the second place, having regard to the presence of the word element ‘says’ in the mark applied for, which, however, plays a secondary role. In the light of those considerations, the Board of Appeal confirmed the Opposition Division’s assessment, concluding that the two marks at issue had an average degree of visual similarity.

37 The applicant takes the view that the two signs at issue differ visually or, at least, are visually similar only to a low degree. To that effect, he argues that, first, the element ‘says’ of the mark applied for is far from playing a secondary role, given that its size is similar to that of the element ‘carmen’, notwithstanding their different typography. Second, the figurative element of the earlier mark representing a drop of water has an influence on the semantics of the sign by referring to water, namely the expression ‘agua del carmen’ in Spanish. The applicant consequently concludes that those two elements have a noticeable impact on the perception of the signs at issue by the relevant public, since that public will not pay as much attention to the element ‘carmen’ which is a very common term in Spanish.

39 In that respect, it must be observed, in the first place, that the marks at issue coincide having regard to the word element ‘carmen’, written, in both cases, in bold and in a larger font size. As stated in paragraph 34 above, it is the dominant visual element in those two marks.

40 In the second place, as EUIPO correctly noted and as recalled in paragraph 33 above, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods or services in question by quoting the name of that mark than by describing the figurative element. Therefore, it must be held that the figurative element of the earlier mark will have less of an impact on consumers than the word elements of the two marks at issue.

41 In the third place, on account of its position, its size and its font, the word element ‘says’ of the mark applied for is less legible and is therefore a secondary visual element.

42 In view of the foregoing, the Board of Appeal was right to find an average degree of visual similarity between the signs at issue.

43 The Board of Appeal found, in paragraph 34 of the contested decision, that phonetically, the two marks coincided in the identical pronunciation of the disyllabic common word, namely ‘kar-men’, which was the longest word element of the two signs at issue. However, they slightly differed in the pronunciation of the short word element ‘del’ of the earlier mark and, for the part of the public which could read it and would pronounce it, in the word ‘says’ of the mark applied for, even though, phonetically, those monosyllabic elements share the sound ‘ei’, present in the phonetic elements ‘del’ and ‘seiz’. Moreover, the Board of Appeal confirmed the Opposition Division’s assessment that consumers naturally tended to shorten long marks in order to reduce them to the elements which were perceived as easiest to refer to and to remember and according to which, in the present case, it was reasonable to state that part of the public would focus its attention on the element ‘carmen’ of the mark applied for, which it would recognise and pronounce more easily because it would be familiar with the language of the territory.

44 The applicant claims that the two marks at issue differ phonetically or, at most, present very few similarities. To that effect, the two marks are not shortened by consumers, since they are not long. In addition, given that the mark applied for has a uniform meaning, it is read in its entirety, namely as corresponding to the expression ‘carmen says’. The applicant also takes the view that the elements ‘del’ and ‘says’ of the two signs at issue present very few, if any, similarities.

46 In that regard, it must be held, first, that the two marks at issue coincide in the identical pronunciation of their disyllabic common word element ‘carmen’ (which is pronounced ‘kar-men’), and that the other word elements in the two marks, namely the words ‘del’ and ‘says’, both monosyllabic and shorter, share, at least, the ‘e’ sound.

47 Furthermore, the applicant has not established that it would be unreasonable to assume that a significant part of the relevant public would shorten the two marks at issue, and, in particular, the mark applied for, by not pronouncing the element ‘says’, taking into account, inter alia, the fact that, as a foreign word for the Spanish-speaking public, it would be less easy to refer to and remember.

48 Consequently, there is no reason to call into question the Board of Appeal’s finding that, in essence, the marks at issue are phonetically ‘highly similar’.

49 The Board of Appeal found, in paragraph 35 of the contested decision, that conceptually, at least for a significant part of the relative public, the word ‘carmen’, which is present in the two marks at issue and which represents their most distinctive element, is directly perceived as a Spanish female first name. According to the Board of Appeal, the other elements of the two marks do not play a sufficiently influential role to semantically divert the relevant public’s attention from the common element ‘carmen’. On that basis, the Board of Appeal found that, since each mark conveyed the same concept associated with the first name ‘Carmen’, the two marks had a ‘certain’ conceptual ‘similarity’.

50 The applicant takes the view, in contrast to the Board of Appeal’s findings, that each mark is conceptually distinct. In that respect, he argues that the Board of Appeal made a grammatical and semantic error in that the expression ‘del carmen’ is inevitably understood by Spanish speakers as referring exclusively to a geographic place, whereas the term ‘carmen’ followed by the verb ‘says’ could refer only to a person. To that effect, the applicant states that, according to the dictionary of the Real Academia Española (Royal Spanish Academy), the definition of the word ‘carmen’ is ‘garden’ or ‘verse or poetic composition’. Moreover, he argues that, among other meanings, the term ‘carmen’ is a common female first name in Spain. Furthermore, he claims that there are many names of places, in countries which are not only Spanish-speaking, containing the expression ‘del carmen’, like ‘Puerto del Carmen’, ‘El Carmen’, ‘Playa del Carmen’, ‘Agua del Carmen’ and ‘Las Salinas del Carmen’. In that connection, he adds that, originally, the female first name ‘Carmen’ referred to Our Lady of Mount Carmel and that Mount Carmel is a mountain in the territory of ancient Palestine and that that first name therefore refers to a place. However, the applicant maintains that, according to the Spanish rules of grammar, the preposition ‘del’ (which is the contraction of ‘de el’, namely ‘of the’ in English) never follows names designating a person and particularly names designating persons of the female gender. The applicant therefore takes the view that the expression ‘del carmen’, which refers to a place, and the mark ‘carmen says’, which refers to a person, convey different concepts on the part of the relevant Spanish-speaking public. Lastly, the applicant claims that the fact that the earlier mark includes a graphic element consisting of a drop of water has an influence on the semantics of that mark.

52 It must be recalled, first, that it is common knowledge between the parties that, among other meanings, the term ‘carmen’ is a common female first name in Spain. Furthermore, as stated in paragraph 34 above, the word ‘carmen’ is a distinctive and dominant element of the two marks at issue, whereas the word element ‘del’ plays a secondary role in the earlier mark. The Board of Appeal was therefore right in confirming the Opposition Division’s finding that, at least for a significant part of the relevant public, the first meaning that would come to mind when encountering those marks would be that of a Spanish female first name.

53 The applicant’s arguments are incapable of calling that conclusion into question.

54 In the first place, except for a brief reference to formal definitions given by the dictionary of the Royal Spanish Academy, the applicant has not submitted any specific and substantiated argument in order to establish that the relevant public would understand and use the word ‘carmen’ as referring to the concepts of ‘garden’ or of ‘verse or poetic composition’ or that it would associate the earlier mark with the Water of Carmen.

55 In the second place, as regards the applicant’s argument that the contraction ‘del’ always follows male names and, consequently, in the present case, necessarily refers to a place, it must be noted that, as EUIPO correctly observed, according to the Spanish rules of grammar, places always begin with a capital letter. This is confirmed by the examples of places cited by the applicant, which all begin with a capital letter. Given that, in the present case, in the earlier mark, the letter ‘d’ is not written in capitals but in lowercase, it is not reasonable to assume that ‘del Carmen’ necessarily refers to a place for the Spanish-speaking public. Moreover, as the Board of Appeal correctly states in paragraph 31 of the contested decision, there are indeed names, such as ‘María del Carmen’ which refer to a person and not to a place or an origin.

56 In the third place, as regards the applicant’s argument that, originally, the female first name ‘Carmen’ in fact referred to Our Lady of Mount Carmel, it is not such as to substantiate his argument that the word ‘carmen’ refers to a place on the part of the relevant public. First, the words ‘carmel’ and ‘carmen’ differ as regards their last letter and it is therefore not clear that a Spanish person would make the link between the two. Second, Mount Carmel is located in Israel, that is to say far from Spain, and it is thus also not evident that it would be known to a Spanish-speaking public.

57 Lastly, the applicant also failed to submit any arguments or evidence to show that the Water of Carmen (Agua del Carmen) would be known to the Spanish-speaking public and, consequently, that the figurative element of the earlier mark would lead the relevant public to think immediately and without further thought of a drop of water, which, in turn, would be associated with the Water of Carmen, and not simply with a female name.

58 Consequently, there is no reason to call into question the Board of Appeal’s finding that the marks at issue have a ‘certain’ conceptual ‘similarity’.

59 In paragraph 36 of the contested decision, the Board of Appeal found that the earlier mark, as a whole, had an inherently normal degree of distinctive character, since it did not have any apparent meaning in relation to the goods and services covered by it, which, in essence, the applicant does not dispute.

60 It follows from paragraphs 36 to 44 of the contested decision that, after having taken into account all the relevant factors, the Board of Appeal confirmed the Opposition Division’s finding that there was a likelihood of confusion between the two marks at issue. More specifically, the Board of Appeal found, in paragraph 39 of the contested decision, that, despite the fact that the relevant public pays an average to high level of attention in the purchase of the goods and the use of the services in question, the visual, phonetic and conceptual similarity of the signs, linked to the presence of the common element ‘carmen’, which was the most distinctive and dominant element, is not compensated for by the differences found between the signs at issue on account of their other elements. According to the Board of Appeal, slight visual and phonetic differences between the marks at issue are not sufficient to rule out a likelihood of confusion, including a likelihood of association of the commercial origin of the signs, even for the services found to be similar to a low degree, despite the increased level of attention of the consumer when purchasing most of the services at issue. In that connection, the Board of Appeal stated that it was conceivable that the relevant consumers, even if they noticed the difference between the signs at issue, perceive the mark applied for as a variation of the earlier mark.

61 The applicant criticises the Board of Appeal for not having carried out a global assessment in accordance with the Court’s settled case-law. More specifically, he argues that the relevant public will not regard the mark applied for as a variation of the earlier sign. According to the applicant, the element ‘carmen’ is a term in fact used in Spain to cover many places and persons. The applicant reasserts that, in any event, the conceptual difference of the two signs rules out such a link on the part of the public. In addition, he also submits that the Board of Appeal took account of only a single element of the two complex marks and, on the other hand, did not properly take account of the other non-negligible elements of those marks, namely the word elements ‘del’ and ‘says’, as well as the figurative element of the earlier mark representing a drop of water.

63 It should be recalled, first, that, as follows from the 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 marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 3 May 2023, FFI Female Financial Invest v EUIPO – MLP Finanzberatung (Financery), T‑7/22, not published, EU:T:2023:234, paragraph 81 and the case-law cited).

64 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components are negligible in the overall impression created by the mark (see judgment of 11 October 2023, FLOWBIRD, T‑296/22, not published, EU:T:2023:613, paragraph 69 and the case-law cited).

65 In the present case, in the first place, as regards the applicant’s arguments concerning the alleged visual, phonetic and conceptual differences of the two marks having regard to the element ‘del’, to the figurative element of the earlier mark representing a drop of water and to the element ‘says’, it should be noted that they have been examined and rejected in paragraphs 36 to 58 above.

66 In the second place, concerning the applicant’s arguments that the finding, made in paragraph 42 of the contested decision, that consumers perceived the mark applied for as a variation of the earlier mark is mere speculation by the Board of Appeal, it must be stated that the applicant repeats, in essence, his argument concerning the conceptual comparison of the two marks, which has already been examined and rejected in paragraphs 49 to 58 above. However, the applicant has not submitted before the Court any specific and sufficiently substantiated arguments or evidence which would be such as to call into question the assessment of the Board of Appeal and its conclusion that there was a likelihood of confusion by the relevant consumers of the commercial origin of the marks at issue, having regard to the visual, phonetic and conceptual similarity of the two marks.

67 In the light of the foregoing considerations, the Board of Appeal’s finding that there was a likelihood of confusion between the two marks at issue is free from error and cannot be invalidated by the applicant’s arguments in that regard.

The third plea, alleging infringement of Article 109(1) of Regulation 2017/1001

69 In paragraphs 46 to 48 of the contested decision, the Board of Appeal found that, pursuant to Article 109(1) of Regulation 2017/1001 and Article 18 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), it was for the applicant, as the losing party, to bear the costs incurred by the other party in the appeal proceedings. As to the appeal proceedings, those costs included the other party’s costs of professional representation, which amounted to EUR 550. With regard to the opposition proceedings, the Board of Appeal noted that the Opposition Division had already ordered the parties to bear their own costs. Therefore, it concluded that the total amount for both proceedings amounted to EUR 550.

70 The applicant argues that the Board of Appeal infringed Article 109(1) of Regulation 2017/1001 as regards the legal costs incurred by the other party for the purposes of the appeal proceedings. The applicant takes the view that, in so far as the other party to the proceedings had not appeared before the Board of Appeal, the fact that he is bearing the sum of EUR 550 in respect of representation costs which were not actually incurred constitutes unjust enrichment.

72 It should be recalled that Article 109(1) of Regulation 2017/1001 states that ‘the losing party in opposition proceedings … or appeal proceedings shall bear the fees paid by the other party [and] all costs incurred by the other party that are essential to the proceedings, including … the remuneration of a representative …, within the limits of the scales set for each category of costs in the implementing act [adopted] in accordance with paragraph 2 of [Article 109] of this [regulation]’. According to Article 18(1)(c)(i) and (iii) of Implementing Regulation 2018/626, the maximum rate for costs of representation incurred by the successful party and borne by the losing party is fixed at EUR 300 as regards opposition proceedings and at EUR 550 as regards appeal proceedings.

73 Moreover, Article 109(7) of Regulation 2017/1001 states, first, that, when the costs to be paid are limited to the fees paid to EUIPO and the representation costs, the Board of Appeal is to fix the amounts to be reimbursed pursuant to, inter alia, Article 109(1) of that regulation, and, second, that, in such a case, representation costs are to be awarded at the level laid down in the implementing act adopted pursuant to Article 109(2) of that regulation and ‘irrespective of whether they have been actually incurred’.

74 In that connection, the Court has already observed, in paragraph 113 of the judgment of 1 February 2017, Gómez Echevarría v EUIPO – M and M Direct (wax by Yuli’s) (T‑19/15, not published, EU:T:2017:46), in relation to provisions then in force, the content of which was to be found, in essence, in the regulation applicable in the present case, that none of those provisions ‘made the fixing of the costs of representation conditional on prior proof or justification by the parties and, in particular, the successful party’. Accordingly, the Court found that, since the representation costs were fixed in a decision of the Board of Appeal, in accordance with the provisions relating to the allocation of costs, no justification was required as regards the existence of representation costs or their amount.

75 In addition, it follows from the case-law of the Court that, although it is true that Article 109(7), in fine, of Regulation 2017/1001 sets out that representation costs are to be awarded at the maximum level laid down, ‘irrespective of whether they have been actually incurred’, the reference contained in that provision to the first sentence of that paragraph and, therefore, to ‘payment’ of representation costs necessarily limits the automatic and standard field of application of such a provision where the successful proprietor took part in the administrative procedure only to a limited extent (judgment of 27 March 2019, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑265/18, not published, EU:T:2019:197, paragraph 60).

76 It should be noted that, in that case, the successful party had not lodged any submissions before the Opposition Division or before the Board of Appeal. It was in those specific circumstances that the Court had ruled that to order the applicant to bear the costs which the other party had been unable or unwilling to incur, given that the other party remained passive throughout the administrative procedure, would be tantamount, in essence, to distorting the meaning of Article 109(1) and (7) of Regulation 2017/1001 (see, to that effect, judgment of 27 March 2019, Formata, T‑265/18, not published, EU:T:2019:197, paragraphs 61 and 62).

77 However, in the present case, it must be stated, as EUIPO correctly contends, that, unlike the case referred to in paragraph 76 above, the other party did not remain passive in the administrative procedure. It is apparent from EUIPO’s administrative file that it was indeed the other party’s legal representative who initiated the opposition proceedings by filing a notice of opposition to the mark applied for on 2 July 2021. That representative also remained the same throughout the entire administrative procedure and could receive all documents communicated in that respect.

78 In such circumstances, the fact that the other party did not submit any observations before the Board of Appeal is insufficient to find that that party has not incurred representation costs in respect of the proceedings before the Board of Appeal which have not been warranted and may be arbitrarily fixed by the Board of Appeal pursuant to and within the limits of the applicable regulation (see, to that effect, judgment of 24 May 2023, Bimbo v EUIPO – Bottari Europe (BimboBIKE), T‑509/22, not published, EU:T:2023:281, paragraphs 66 and 67).

80 Since none of the pleas put forward by the applicant is well founded, the action must be dismissed in its entirety.

81 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.

82 Even though the applicant has been unsuccessful, EUIPO applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.

2. Orders Mr Enrique Pich-Aguilera Molins and the European Union Intellectual Property Office (EUIPO) to each bear their own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Pich-Aguilera Molins v EUIPO - de Puig Arboli (Carmen says) (EU trade mark - Judgment) [2024] EUECJ T-1134/23 (20 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T113423.html Cite as: ECLI:EU:T:2024:854, EU:T:2024:854, [2024] EUECJ T-1134/23

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