Laboratorio SYS v EUIPO - Dr. Babor (sYs) (EU trade mark - Judgment) [2024] EUECJ T-39/24 (20 November 2024)

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( EU trade mark - Invalidity proceedings - EU word mark sYs - Earlier national figurative marks S&S cosmética natural - Relative ground for invalidity - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )

Laboratorio SYS, SL, established in Torrent (Spain), represented by N. Fernández Fernández-Pacheco, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,

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

Dr. Babor GmbH & Co. KG, established in Aachen (Germany), represented by J. Sroka, lawyer,

composed of M.J. Costeira, President, P. Zilgalvis and E. Tichy-Fisslberger (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 its action under Article 263 TFEU, the applicant, Laboratorio SYS, SL, seeks the annulment and the alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 November 2023 (Case R 2462/2022-1) (‘the contested decision’).

2 On 8 April 2021, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the intervener, Dr. Babor GmbH & Co. KG, on 15 November 2017, for the word sign sYs.

3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Soaps; Perfumery; Essential oils; Cosmetics’.

4 The application for a declaration of invalidity was based, inter alia, on two earlier Spanish marks.

5 First, the Spanish figurative mark (‘the first earlier mark’) covering goods in Class 3 and corresponding to the following description: ‘Bleaching preparations and other laundry use substances; cleaning polishing scouring and abrasive preparations; soaps; perfumery essential oils cosmetics hair lotions; dentifrices; deodorants for personal use (perfumery) and sanitary preparations (cosmetics, hair lotions; dentifrices; deodorants for personal use (perfumery) and sanitary preparations which are toiletries’, reproduced below:

6 Second, the applicant relied on the Spanish figurative mark (‘the second earlier mark’) covering services in Class 39 and corresponding to the following description: ‘Distribution transport storage and packaging services of all kinds of products and preparations for cleaning polishing and degreasing; cosmetic perfumery hygiene and cleaning products in general’, reproduced below:

7 As regards those earlier marks, the ground relied on in support of the application for a declaration of invalidity was that referred to in Article 60(1)(a) 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), read in conjunction with Article 8(1)(a) and (b) of that regulation. The applicant also based its application for a declaration of invalidity on the ground referred to in Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, as regards other earlier rights.

8 On 2 November 2022, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and declared the contested mark invalid in respect of all the goods for which it had been registered.

9 On 12 December 2022, the intervener filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

10 By the contested decision, the Board of Appeal upheld the appeal and annulled the decision of the Cancellation Division, on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(a) and (b) of Regulation 2017/1001. Consequently, the Board of Appeal rejected the application for a declaration of invalidity in so far as it was based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(a) and (b) of that regulation. Given that the Cancellation Division had not analysed the application for a declaration of invalidity in so far as it was based on Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, the Board of Appeal remitted the case to the Cancellation Division for it to assess whether the conditions of that ground for invalidity were satisfied.

– order EUIPO and the intervener ‘to bear the costs and expenses incurred in all proceedings before EUIPO and the Court’.

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

– order the applicant to bear the costs of the cancellation proceedings, of the appeal proceedings before the Board of Appeal and of the application before the Court.

14 The applicant relies on a single plea in law, alleging, in essence, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of Regulation 2017/1001.

15 According to the applicant, the Board of Appeal erred in finding that there was no likelihood of confusion.

16 EUIPO and the intervener dispute the applicant’s arguments and contend that the Board of Appeal was right to find that there was no such likelihood.

17 It is apparent in particular from Article 60(1)(a) of Regulation 2017/1001 that an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in paragraph 1 of that article are satisfied.

18 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the 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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, earlier trade marks mean trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

19 The risk that the public might 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).

20 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

21 In the present case, the Board of Appeal first assessed the application for a declaration of invalidity in so far as it was based on the first earlier mark, referred to in paragraph 5 above, in order to conclude that, in its view, there is no likelihood of confusion between that earlier mark and the contested mark (paragraphs 31 to 76 of the contested decision). It is therefore necessary to first review that assessment on the part of the Board of Appeal.

22 In paragraph 33 of the contested decision, the Board of Appeal confirmed the Cancellation Division’s finding that the goods at issue target the public at large with an average degree of attention.

23 Given that the first earlier mark is a Spanish trade mark, the Board of Appeal found, in paragraph 34 of the contested decision, that the relevant territory for the assessment of the likelihood of confusion is Spain.

24 Those findings, expressly confirmed by the applicant and EUIPO, and not disputed by the intervener, do not contain any error of assessment and must therefore be upheld.

25 In paragraph 66 of the contested decision, the Board of Appeal stated that it agreed with the Cancellation Division’s finding that the goods at issue are all identical.

26 Those findings, expressly confirmed by the applicant and EUIPO, and not disputed by the intervener, do not contain any error of assessment and must therefore be confirmed.

27 The global assessment of the likelihood of confusion must, so far as concerns the visual, aural or conceptual similarity of the signs in question, 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 appreciation of that likelihood of confusion. In that 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).

28 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). 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, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

The perception of the first earlier mark and its distinctive and dominant elements

29 The applicant submits that the word element ‘S&S’ or, possibly, for part of the relevant public, the word element ‘SS’, is dominant in the first earlier mark, and accordingly the comparison of the marks at issue should focus on those elements.

30 According to the applicant, the Board of Appeal erred in finding that there are three possible interpretations for the first earlier mark. The Board of Appeal was vague because it put forward such a large number of interpretations, the mere analysis of which reveals contradictions.

31 In the first place, it is necessary to reject out of hand the notion that the relevant public may simply perceive that mark as a purely figurative element of flowers, without perceiving the element ‘S&S’ or the letters ‘SS’. The size of those letters makes them clearly visible. In the second place, the first earlier mark was registered by the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office, Spain) as S&S COSMETICA NATURAL. In the third place, the term ‘S&S’ is clearly visible on all the goods marketed by the applicant under the first earlier mark. It follows from the judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master) (T‑480/12, EU:T:2014:1062), that the evidence of the actual commercial use of the mark at issue must be taken into account. In the present case, that use demonstrates that the relevant public perceives that mark as ‘S&S’.

32 In the fourth place, the ornamental element of flowers of the first earlier mark is positioned behind that word element, is merely decorative and cannot have a dominant position within that mark. According to EUIPO’s decision-making practice, in marks similar to the first earlier mark, the ornamental element positioned behind denominative elements has a purely decorative character and lacks distinctiveness. In the fifth place, the roses in the first earlier mark have only very limited distinctiveness in relation to the goods at issue. In the sixth place, the applicant submits that, in accordance with EUIPO’s decision-making practice, the dominant character of a component within a sign is primarily determined by its position, size, dimensions and/or the use of colours, provided that those characteristics influence the visual impact. According to that decision-making practice, the dominant element is the one in a central position and large in size, which is the case with the word element ‘S&S’ in the first earlier mark.

33 In the seventh place, the word element ‘cosmética natural’ is descriptive and should not therefore be taken into account in the comparison of the marks at issue. In the eighth place, in accordance with settled case-law, when signs consist of both word and figurative elements, the word element usually has a greater impact than the figurative one on the relevant public. That rule is only weakened when the respective purely figurative elements are so significant that they surpass the verbal parts of the signs at issue, which is not the case here. In the ninth place, it should be recalled that the applicant’s name is Laboratorio SYS, SL.

35 The Board of Appeal described the first earlier mark as a highly stylised figurative mark made up of an ornamental representation of flowers, possibly roses, and the sequence ‘cosmética natural’ positioned underneath (see paragraph 40 of the contested decision). It found that there could be no certainty as to how the highly stylised device of the first earlier mark would be perceived by the relevant public. Thus, according to the Board of Appeal, it cannot be excluded that a part of the relevant public could perceive the device as a purely stylised element depicting flowers (roses) with some ornamental elements. By contrast, the Board of Appeal found it rather unlikely that the relevant public would immediately perceive the two capital letters ‘S’ within the first earlier mark which are in fact obscured in the overall representation of the sign, as the Cancellation Division had nevertheless found. According to the Board of Appeal, that interpretation would require an analytical examination of the sign at issue from the relevant public, which does not correspond to its approach. The same holds true with the typographical character ‘&’, which is barely perceptible for a relevant part of the public, as it is placed in between the two letters ‘S’ and overlaps with the picture of the roses (see paragraphs 41 to 44 of the contested decision)

36 Thus, as EUIPO also submits, it is unequivocally clear from the contested decision that the Board of Appeal examined only two possible interpretations of the first earlier mark by the relevant public, that is to say, first, that, leaving aside the words ‘cosmética natural’, the relevant public would not perceive any word element in that mark, but merely a purely stylised element depicting flowers (roses) with some ornamental elements and, second, that the relevant public would recognise the two capital letters ‘S’ in a stylised form in that figurative element of that mark.

37 Consequently, the applicant’s claim that the Board of Appeal also defined a third possible interpretation of the first earlier mark by the relevant public must be rejected at the outset. As EUIPO correctly submits, the passages of the contested decision, in which the applicant claims to have identified that possible interpretation, clearly concern, in the light of both their wording and the general scheme of the contested decision, aspects relating to the second possible interpretation referred to in paragraph 36 above. As the contested decision is therefore clear in that regard, the applicant’s arguments alleging that the Board of Appeal was vague and contradictory must also be rejected.

38 Furthermore, it is important to bear in mind, as EUIPO did, that, even though the Board of Appeal found that it was rather unlikely that the relevant public would perceive the letters ‘S’ in the first earlier mark, it nevertheless examined the likelihood of confusion, also taking into account that perception, and came to the conclusion that there was no such likelihood of confusion in that case either. The Board of Appeal therefore also took account of that best-case scenario for the applicant.

39 As regards the applicant’s first argument that the size of the element ‘S&S’ or the letters ‘SS’ makes them clearly visible, which is apparent from three enlargements of those letters produced by the applicant, it must be borne in mind that it follows from the case-law cited in paragraph 27 above that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. As is argued, in essence, by EUIPO and the intervener, the fact that the applicant considered it useful to present enlarged images of the element ‘S&S’ is evidence of the poor readability of that word element and rather confirms the Board of Appeal’s assessment that the identification of those letters in the first earlier mark requires significant mental exertion. In particular, it must be noted that, even in the enlarged image, the typographical character ‘&’ is so obscure, because it is superimposed on the image of the flowers, and therefore barely perceptible, that the relevant public will not identify it in that mark.

40 As regards the applicant’s second argument, alleging that the first earlier mark was registered by the Spanish Patent and Trade Mark Office as S&S COSMETICA NATURAL, it should be noted that that mark is a figurative mark which was registered in the form reproduced in paragraph 5 above. Although it is clear from the extract from the online register of the Spanish Patent and Trade Mark Office, which is reproduced by the applicant in the application, that the first earlier mark is described therein as ‘S&S COSMETICA NATURAL’, it must nevertheless be stated that that description of the first earlier mark only provides information on the perception of that mark by the applicant as an applicant for registration or, as the case may be, by the Spanish Patent and Trade Mark Office, but not on its perception by the relevant public. The likelihood of confusion between trade marks must be assessed by reference to the perception of those trade marks by the relevant public (see, by analogy, judgment of 8 July 2020, Essential Export v EUIPO – Shenzhen Liouyi International Trading (TOTU), T‑633/19, not published, EU:T:2020:312, paragraph 38 and the case-law cited). As EUIPO correctly submits, the description of the first earlier mark in that register is therefore not relevant in the present case.

41 The applicant’s third argument that, in order to determine the perception of the first earlier mark by the relevant public, it is necessary to take into account evidence relating to the mark’s actual commercial use, must also be rejected. In that regard, it is sufficient to note, as EUIPO did, that it is apparent from settled case-law that, when assessing whether they are identical or similar, the signs must be compared in the form in which they are protected, that is to say, as they were registered or as they appear in the application for registration. The actual or potential use of registered marks in another form is irrelevant when comparing the signs (see judgment of 5 October 2022, Puma v EUIPO – CMS (CMS Italy), T‑711/20, not published, EU:T:2022:604, paragraph 56 and the case-law cited). It follows that the evidence submitted by the applicant relating to the actual commercial use of the first earlier mark is irrelevant for the purpose of establishing the perception of that mark by the relevant public.

42 In contrast with what the applicant submits, nothing to the contrary follows from the judgment of 11 December 2014, Master (T‑480/12, EU:T:2014:1062). As the applicant itself maintains, it must be noted that that judgment concerned the ground for opposition provided for in Article 8(5) of Regulation 2017/1001, and not that provided for in Article 8(1)(b) of that regulation, which is at issue here.

43 It is apparent from paragraphs 89 and 90 of the judgment of 11 December 2014, Master (T‑480/12, EU:T:2014:1062), that the evidence relating to the commercial use of the mark applied for, in that case, constituted relevant evidence for the purposes of establishing a risk of free-riding. That risk has been identified by the case-law as one of the cases in which it can be established that unfair advantage has been taken of the distinctive character or the repute of an earlier mark, within the meaning of Article 8(5) of Regulation 2017/1001, and has been defined as the risk that the image of a mark with a reputation or the characteristics which that mark projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods will be made easier by that association with the earlier mark with a reputation (see judgment of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 82 and the case-law cited). In paragraph 88 of the judgment of 11 December 2014, Master (T‑480/12, EU:T:2014:1062), the Court held that a finding of a risk of free-riding on the basis of Article 8(5) of Regulation 2017/1001 may be established, in particular, on the basis of logical deductions resulting from an analysis of probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case, including the use, by the proprietor of the mark applied for, of packaging similar to that of the goods of the proprietor of the earlier marks.

44 As EUIPO and the intervener submit, in essence, there is no reason to apply that case-law concerning one of the conditions for the application of Article 8(5) of Regulation 2017/1001 to the ground of opposition provided for in Article 8(1)(b) of that regulation, which is at issue in the present case. Such an application would run counter to the case-law cited in paragraph 41 above, according to which the actual or potential use of registered marks in another form is irrelevant when comparing the signs at issue.

45 In the light of the foregoing, the applicant’s ninth argument, that its name is Laboratorio SYS, SL, is not relevant either. As EUIPO correctly submits, the first earlier mark does not contain an indication of the applicant’s name. The likelihood of confusion between trade marks must be assessed by reference to the perception of those trade marks by the relevant public (see paragraph 40 above) by comparing them in the form in which they are protected, that is to say, as they were registered.

46 All of the applicant’s arguments relating to the relevant public’s understanding of the first earlier mark must therefore be rejected.

47 The Board of Appeal found that the oversized figurative element in the shape of flowers, together with ornamental elements which might be perceived by a part of the relevant public as the letter ‘S’, is striking and original and in fact dominates the first earlier mark, while the expression ‘cosmética natural’, positioned underneath, is secondary. The two capital letters ‘S’ are obscured in the graphic representation and convey the ornamental character of that mark and do not constitute a co-dominant element, as the Cancellation Division had found (see paragraph 45 of the contested decision). According to the Board of Appeal, roses may indicate the floral scent of the goods, which reduces their distinctiveness. The words ‘cosmética natural’ are non-distinctive with respect to the goods at issue, whereas the two letters ‘S’, if perceived at all by a part of the relevant public, are normally distinctive in relation to those goods (see paragraph 47 of the contested decision).

48 At the outset, it must be noted that the applicant’s fifth argument, that the roses contained in the first earlier mark have only very limited distinctiveness in relation to the goods at issue, corresponds, in essence, to the Board of Appeal’s finding in paragraph 47 of the contested decision that the distinctiveness of the roses is reduced in the light of the fact that they might indicate the floral scent of the goods.

49 Furthermore, in so far as the applicant submits in its eighth argument that, according to settled case-law, where a sign consists of both word and figurative elements, the word element usually has a greater impact than the figurative one on the relevant public, it must be stated that, in paragraph 45 of the contested decision, the Board of Appeal expressly referred to that case-law, recalling that the word element of a sign does not automatically have a stronger impact.

50 While it follows from the case-law 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 of the trade mark than by describing its figurative element (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), it has also been held that it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In the case of a composite mark, the figurative element may rank equally with the word element. It is therefore appropriate to examine the intrinsic qualities of the figurative element and of the word element of the contested mark as well as the respective positions of those elements, in order to identify the dominant component (see judgment of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑350/13, EU:T:2017:633, paragraph 29 and the case-law cited).

51 In the present case, contrary to what the applicant claims, the figurative element of the first earlier mark is not merely a decorative element which cannot have a dominant position within that mark. While it is true that the roses contained in that figurative element have, as such, only limited distinctiveness in relation to the goods at issue (see paragraph 48 above), the Board of Appeal correctly found, in essence, that the oversized figurative element with flowers and ornamental elements, which might be perceived by a part of the relevant public as the letter ‘S’, is striking and original and in fact dominates that mark, in particular in relation to the word element ‘cosmética natural’ positioned underneath, which is secondary. As the Board of Appeal correctly pointed out, the two letters ‘S’ are in fact obscured in the graphic representation and, on account of their particular typography with two curve strokes and a spine, convey the ornamental character of the first earlier mark (see paragraph 45 of the contested decision).

52 It follows that the Board of Appeal did not make an error of assessment in finding that, in the present case, it is the figurative element of the first earlier mark which dominates that mark, and not the word element.

53 For the same reasons, it is also necessary to reject the applicant’s fourth argument that the ornamental element of flowers of the first earlier mark is merely decorative and cannot have a dominant position.

54 In so far as, in that context, the applicant refers to EUIPO’s decision-making practice to support its point of view, it is sufficient to recall that the decisions concerning registration of a sign as an EU trade mark, which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on that of a previous decision-making practice of those boards (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

55 The Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, it added that the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).

56 In any event, as EUIPO and the intervener correctly submit, the signs at issue in the decisions of EUIPO cited by the applicant differ substantially from the first earlier mark, in particular because the word elements in those signs are clearly recognisable, which is not the case in the first earlier mark. It follows that EUIPO’s decision-making practice relied on by the applicant is not relevant in the present case.

57 For similar reasons, the applicant’s sixth argument, in which it refers to a decision-making practice set out in the EUIPO Guidelines, from which it follows that the dominant element of a sign is that which is in a central position and is large in size, is also irrelevant. Unlike the cases thus cited, the word element consisting of the two letters ‘S’ is not clearly distinguishable from the rest of the sign, but forms an integral part of the oversized figurative element in which those letters are obscured in the graphic representation and in which, on account of their particular typography with two curve strokes and a spine, they convey the ornamental character of the first earlier mark (see paragraph 51 above).

58 Furthermore, in so far as the applicant claims, by its seventh argument, that the word element ‘cosmética natural’ is descriptive and that it should therefore not be taken into account in the comparison of the signs at issue, EUIPO is correct in maintaining that that element cannot be considered to be negligible and that it thus could not have been entirely disregarded in the context of the comparison of those signs, even if it is secondary, of a smaller size, in a lower position and descriptive of the goods at issue. It is apparent from the case-law that the fact that one of the two words making up a word mark is descriptive does not, in itself, allow the conclusion to be drawn that that word is insignificant in the overall impression produced by that mark (judgment of 11 December 2014, Oracle America v OHIM – Aava Mobile (AAVA CORE), T‑618/13, EU:T:2014:1053, paragraph 33). In the present case, as regards the only word element of the first earlier mark which is clearly readable, it cannot be regarded as being entirely negligible, within the meaning of the case-law cited in paragraph 28 above, in the overall impression created by that mark.

59 Consequently, all of the applicant’s arguments concerning the assessment of the distinctive and dominant elements of the first earlier mark must be rejected, as must the applicant’s arguments in relation to the relevant public’s understanding of that mark (see paragraph 46 above).

60 It follows from the foregoing that the Board of Appeal did not make an error of assessment in finding that there were two possible interpretations of the first earlier mark by the relevant public, that is to say, first, that, leaving aside the words ‘cosmética natural’, that public would not perceive any word element in that mark, but merely a purely stylised element depicting flowers (roses) with some ornamental elements and, second, that the relevant public would recognise the two letters ‘S’ in a stylised form in that figurative element of that mark and that the oversized figurative element in the shape of flowers together with ornamental elements, which might be perceived by a part of the relevant public as the letter ‘S’, dominates that mark, while the expression ‘cosmética natural’ is secondary, but not negligible.

61 On the basis of its line of argument that the word element ‘S&S’ is the dominant element of the first earlier mark, the applicant claims that the marks at issue are visually and aurally very similar, since, according to the applicant, the comparison of those marks must be made between the word elements ‘S&S’ and ‘SYS’.

62 The applicant criticises the Board of Appeal for what it regards as a complex, unclear and cumbersome analysis of the three possible interpretations of the first earlier trade mark, to which the Board of Appeal referred in the contested decision. According to the applicant, that analysis is difficult to understand and contradictory. In particular, as regards the third possible interpretation, the Board of Appeal took the view, in paragraph 65 of the contested decision, that the signs at issue are visually similar, but are not similar from an aural or conceptual point of view. However, the Board of Appeal stated, in paragraph 72 of the contested decision, that the signs at issue are not visually and conceptually similar, but are aurally similar at least to a lesser degree. Furthermore, it is not possible to understand why the Board of Appeal found that those signs are aurally similar only in the second possible interpretation and not in the third.

64 As has previously been stated in paragraphs 36 and 37 above, it is unequivocally clear from the contested decision that the Board of Appeal examined only two possible interpretations of the first earlier mark by the relevant public, that is to say, first, that, leaving aside the words ‘cosmética natural’, that public would not perceive any word element in that mark, but merely a purely stylised element depicting flowers (roses) with some ornamental elements and, second, that the relevant public would recognise the two letters ‘S’ in a stylised form in that figurative element of that mark.

65 The Board of Appeal found, first, in paragraphs 51 and 52 of the contested decision, that, for the part of the relevant public who would not perceive the device of the first earlier mark as a highly stylised representation of two letters ‘S’, the marks at issue are visually, aurally and conceptually different.

66 Second, in paragraphs 53 to 65 of the contested decision, the Board of Appeal compared the signs at issue in detail in the second situation, according to which part of the relevant public would indeed perceive two letters ‘S’ in the first earlier mark. The Board of Appeal concluded, in paragraph 61 of the contested decision, that the signs at issue are visually not similar. As regards the aural aspect, the Board of Appeal found, in paragraph 63 of that decision, that those signs are aurally similar to at least a lesser degree. Lastly, from a conceptual point of view, the Board of Appeal found, in paragraph 64 of the contested decision, that the contested mark has no meaning and that the differences arising from the word element ‘cosmética natural’ and the floral device of the first earlier mark are of little importance in the overall comparison of the marks at issue in view of their low or even non-existent distinctive character.

67 It is true that, in paragraph 65 of the contested decision, in which the Board of Appeal summarises its findings as regards the similarity of the signs at issue, the Board of Appeal concluded that, for the part of the relevant public who would recognise the two letters ‘S’ in the first earlier mark, ‘the signs are … visually at best similar to at best a low degree, but not similar from an aural or conceptual point of view’. However, EUIPO correctly observes that it is obvious that this is merely a clerical error made by the Board of Appeal in summarising the results of the assessment of the three aspects of the similarity of the signs at issue. The obvious nature of that clerical error is also apparent from paragraph 72 of the contested decision, in which the Board of Appeal correctly recalls its findings as regards those aspects of similarity referred to in paragraph 66 above, by stating that, for the part of the relevant public who would recognise the two letters ‘S’, the signs at issue ‘are visually and conceptually not similar, whereas aurally [they] are similar to at least a low degree’.

68 For the same reasons, the references made by the Board of Appeal, in paragraphs 68 and 75 of the contested decision, to a lesser degree of visual similarity must also be regarded as clerical errors. In the light of its findings as regards the three aspects of similarity referred to in paragraph 66 above, it must be pointed out that the Board of Appeal’s intention was in fact to refer to the lesser degree of aural similarity which it found in paragraph 63 of that decision.

69 Thus, it must be held that, for an informed reader of the contested decision as a whole, it is clear that the wording of paragraphs 65, 68 and 75 of that decision is the product of mere clerical errors and that those paragraphs must be read in accordance with the Board of Appeal’s findings as regards the three aspects of similarity referred to in paragraph 66 above and in paragraph 72 of that decision.

70 Contrary to what is claimed by the applicant, for an informed reader of the contested decision as a whole, there are therefore no difficulties as regards the understanding of that decision nor any contradictions in that decision as regards the comparison of the signs at issue.

71 The Board of Appeal found, in paragraphs 51 to 60 of the contested decision, that the signs at issue are visually different both for the part of the relevant public that would not recognise the two letters ‘S’ in the first earlier mark and for the part of that public that would recognise them.

72 As regards, more specifically, that second part of the relevant public, the Board of Appeal noted that the very peculiar stylisation of the first earlier mark and the word element ‘cosmética natural’ positioned below the figurative element has no counterpart in the contested mark. The mere visual resemblance between the word element ‘SYS’ of the contested mark and the highly stylised two letters ‘S’ in the first earlier mark is not sufficient to create visual similarity between the marks at issue, in the light of the overall impression created by the first earlier mark and its specific graphic representation which characterises that mark as a whole.

73 As regards short signs, the relevant public will be able to perceive the various elements of the signs at issue. The difference between those signs, arising from the clearly perceivable floral figurative element of the first earlier mark, is of great importance and outweighs the two, potentially coinciding, letters ‘S’.

74 Consequently, the first earlier mark produces an overall visual impression that is quite removed, and therefore different, from the contested mark.

75 According to the applicant, it is necessary to compare the terms ‘S&S’ and ‘SYS’, which it claims are nearly identical. It points out that, for the relevant Spanish public, the typographical character ‘&’ and the letter ‘Y’ mean the same thing, namely ‘and’. Thus, the distinction between ‘&’ and ‘Y’ is not relevant to that relevant public.

77 As has been stated in paragraph 39 above, the relevant public will not identify the typographical character ‘&’ in the first earlier mark. The applicant’s arguments based, in essence, on an alleged semantic equivalence of that typographical character to the letter ‘Y’ for the relevant Spanish public are therefore not relevant in the present case.

78 Furthermore, it is apparent from paragraphs 48 to 60 above that, contrary to what is claimed by the applicant, it is not the word element ‘S&S’ which dominates the first earlier mark, but rather the oversized figurative element in the shape of flowers together with ornamental elements which might be perceived by a part of the relevant public as the two letters ‘S’, while the expression ‘cosmética natural’ is secondary, but not negligible. Since the applicant’s arguments are therefore based on incorrect premisses, they must be rejected.

79 Since the Board of Appeal’s assessment of the visual similarity of the signs at issue is correct as to the remainder, it must be upheld.

80 The Board of Appeal found, first, in paragraphs 51 and 52 of the contested decision, that the marks at issue were aurally dissimilar for the part of the relevant public who would not recognise the two letters ‘S’ in the first earlier mark and, second, in paragraphs 62 and 63 of that decision, that, for the part of the relevant public who would recognise those letters in that earlier mark, the marks at issue have, at the very least, a lesser degree of aural similarity. According to the Board of Appeal, in the second situation, the earlier mark would be pronounced as one or two letters ‘S’, whereas the elements of the contested mark would be pronounced as either ‘ese’, ‘i’, ‘ese’ or ‘sis’. The word element ‘cosmética natural’ would not be pronounced by the relevant public.

81 The applicant claims that the signs at issue, namely, in its submission, ‘S&S’ and ‘SYS’, are aurally entirely identical, since the typographical character ‘&’ and the letter ‘Y’ are pronounced identically.

83 For the reasons set out in paragraphs 77 and 78 above, the applicant is incorrect in submitting, first, that the relevant public will recognise the typographical character ‘&’ in the first earlier mark and, second, that the comparison of the marks at issue must relate solely to the word elements ‘S&S’ and ‘SYS’.

84 Since the applicant’s arguments must, therefore, be rejected, the Board of Appeal’s assessment, which is correct, must be upheld.

85 As EUIPO correctly points out, in paragraph 64 of the contested decision, the Board of Appeal found, first, that the contested mark ‘SYS’ has no meaning and, second, that the differences arising from the elements ‘cosmética natural’ and the floral device of the first earlier mark are of little importance in the overall comparison of the marks at issue, given that those elements have at most a low distinctive character. Accordingly, the Board of Appeal concluded, in paragraph 65 of the contested decision, that those marks are not similar from a conceptual point of view.

86 As is apparent from the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).

87 Given that the Board of Appeal was right in finding that the contested mark has no meaning, whereas some elements of the first earlier mark, which are secondary but not negligible (see paragraph 60 above), have meaning from the perspective of the relevant public, it was also right in finding that the marks at issue are dissimilar and therefore not conceptually similar.

88 It follows that the applicant is incorrect in claiming that, in the present case, a conceptual comparison of the signs at issue cannot be made because they lack meaning.

89 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 the similarity of the goods or services concerned. 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).

90 In paragraph 67 of the contested decision, the Board of Appeal found that, for the part of the relevant public that would not recognise the two letters ‘S’ in the first earlier mark, there is no similarity between the marks at issue and, therefore, no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

91 As regards the part of the relevant public that would recognise the two letters ‘S’ in the first earlier mark, the Board of Appeal found, in paragraphs 68 to 76 of the contested decision, that the marks at issue are not visually and conceptually similar, whereas they are, at the very least, aurally similar to a lesser degree. According to the Board of Appeal, the distinctiveness of the first earlier mark is normal and the fact that the two letters ‘S’ in that mark are significantly stylised is decisive, since, overall, the peculiar way in which that mark is stylised is sufficiently memorable and eye-catching for the relevant public with an average degree of attention to be able to distinguish ‘safely’ the marks at issue even for identical goods. Therefore, the Board of Appeal concluded that there was also no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for that part of the relevant public.

92 The applicant submits that, according to the case-law, if the goods covered by the marks at issue are identical, a substantial difference between those marks is required in order to rule out a likelihood of confusion. In the present case, the goods at issue are identical. The marks at issue are visually almost identical for a part of the relevant public and have a high degree of aural similarity, with the result that those differences are insufficient to avoid a likelihood of confusion, especially in view of the average degree of attention of the relevant public. Consumers who typically rely on imperfect recollection would remember the visually prominent and distinctive element of the first earlier mark, namely the element ‘S&S’ or ‘SS’, and could therefore be led to believe that the goods covered by the contested mark are produced by the same entity or economically linked entities. There is therefore a likelihood of confusion.

94 In the present case, it follows from the foregoing that the marks at issue are different for the part of the relevant public that will not recognise the two letters ‘S’ in the first earlier mark (see paragraphs 71 to 88 above). As the Board of Appeal correctly found, where the marks at issue are not similar, it cannot be concluded that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for that part of the relevant public.

95 As regards the part of the relevant public that will clearly identify the two letters ‘S’ in the first earlier mark, it was found that the Board of Appeal correctly established that the marks at issue are not visually and conceptually similar, whereas they have, at the very least, a lesser degree of aural similarity (see paragraphs 71 to 88 above). It also follows from the foregoing that the relevant public has an average degree of attention (see paragraphs 22 to 24 above) and that the goods at issue are identical (see paragraphs 25 and 26 above).

96 Although it is indeed apparent from the judgment of 13 November 2012, tesa v OHIM – Superquímica (tesa TACK) (T‑555/11, not published, EU:T:2012:594, paragraph 53), cited by the applicant, that, if the goods at issue are identical, in order for there to be no likelihood of confusion, the degree of difference between the marks at issue must be high, it is clear that such a degree of difference exists in the present case.

97 First, in the judgment of 13 November 2012, tesa TACK (T‑555/11, not published, EU:T:2012:594), the Court held that there were certain visual and aural similarities (see paragraph 53 of that judgment) and found that the conceptual similarity is irrelevant (see paragraph 47 of that judgment). In the present case, there is a certain similarity between the marks at issue only from an aural point of view, whereas there is no visual or conceptual similarity and, therefore, the marks at issue must be considered to be different in those respects.

98 Second, in the light of what was observed in paragraph 51 above, the Board of Appeal was right to point out that, in the present case, the fact that the two letters ‘S’ in the first earlier mark are significantly stylised is decisive, since, on the whole, the particular way in which that mark is stylised is sufficiently memorable and eye-catching for the relevant public with an average degree of attention to be able to distinguish safely the marks at issue.

99 Thus, in the present case, the Board of Appeal did not make an error of assessment in concluding that, on the whole, there is also no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, for the part of the relevant public that would recognise the two letters ‘S’ in the first earlier mark, since the relevant Spanish public with an average degree of attention would easily distinguish the marks at issue, even as regards identical goods.

100 It follows that the Board of Appeal was right to reject the application for a declaration of invalidity in so far as it was based on the first earlier mark.

101 As regards the application for a declaration of invalidity in so far as it was based on the second earlier mark, referred to in paragraph 6 above, it is sufficient to note, as the Board of Appeal did in paragraph 77 of the contested decision, that that mark is identical to the first earlier mark, whereas the services covered by the second earlier mark are clearly not identical to the goods covered by the contested mark. Consequently, for the reasons set out above concerning the first earlier mark, the outcome cannot be different as regards the second earlier mark.

102 In the light of all the foregoing considerations, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting that the Court order EUIPO to annul the registration of the contested mark.

103 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.

104 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. 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, given that no hearing was organised, be ordered to bear its own costs.

105 In addition, the applicant and the intervener also sought payment of the costs incurred before EUIPO. In that regard, it must be noted that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Therefore, the forms of order of the applicant and of the intervener concerning the costs relating to the invalidity proceedings, which are not recoverable costs, are inadmissible (judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 76).

106 As regards the costs relating to the proceedings before the Board of Appeal, suffice it to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

2. Orders Laboratorio SYS, SL to bear its own costs and to pay those incurred by Dr. Babor GmbH & Co. KG;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Laboratorio SYS v EUIPO - Dr. Babor (sYs) (EU trade mark - Judgment) [2024] EUECJ T-39/24 (20 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T3924.html Cite as: EU:T:2024:853, [2024] EUECJ T-39/24, ECLI:EU:T:2024:853

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