Korres v EUIPO - Naos (EST. KORRES 1996 HYDRA-BIOME) (EU trade mark - Judgment) [2023] EUECJ T-328/22 (13 September 2023)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark EST. KORRES 1996 HYDRA-BIOME – Earlier national word mark HYDRABIO – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Obligation to state reasons – First sentence of Article 94(1) of Regulation 2017/1001 – Scope of the examination to be carried out by the Board of Appeal – First sentence of Article 95(1) of Regulation 2017/1001)

Korres AE – Fysika Proionta, established in Metamorfosi Attikis (Greece), represented by S. Tsimikalis, lawyer,

European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,

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

Naos, established in Aix-en-Provence (France), represented by L. Janin-Reynaud, lawyer,

composed of D. Spielmann, President, V. Valančius and M. Brkan (Rapporteur), Judges,

1 By its action based on Article 263 TFEU, the applicant, Korres AE – Fysika Proionta, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 March 2022 (Case R 1410/2021-5) (‘the contested decision’).

2 On 17 February 2020, the applicant filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:

3 The mark applied for covered goods in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Non-medicated cosmetics and toiletry preparations; perfumery, essential oils; non-medicated dentifrices’.

4 On 13 May 2020, the intervener, Naos, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5 The opposition was based on, inter alia, the French word mark HYDRABIO, registered on 29 July 1983 under number 1 228 781 designating goods in Class 3 and corresponding to the following description: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; toothpastes’.

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

7 On 25 June 2021, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion.

8 On 13 May 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9 By the contested decision, the Board of Appeal dismissed the appeal. First, it noted that the relevant public consisted of the general public in France, whose level of attention was at least average. Second, it found that the goods at issue were identical. Third, noting that the word elements ‘hydrabio’ and ‘hydra-biome’ of the signs at issue had limited, or even very limited, distinctive character, it considered that the degree of visual similarity of the signs was below average, that the signs were phonetically similar to a high degree – or to an average degree if the word element ‘korres’ was pronounced – and that they were conceptually similar to a low degree. Fourth, it found that the earlier mark had to be regarded as having weak distinctive character. Last, setting out the recent case-law of the General Court on marks with weak distinctive character, that is, ‘weak marks’, the Board of Appeal concluded that there was a likelihood of confusion, in so far as the relevant public could be led to believe that the goods concerned came from the same undertaking and that the mark applied for was merely a variation or a sub-mark of the earlier mark.

– dismiss the action in its entirety if, having found that the elements of the signs at issue giving rise to similarity between them are distinctive to an average degree, the Court finds that there is a likelihood of confusion;

– order the applicant to bear its own costs and to pay those incurred by EUIPO and the intervener.

13 The applicant relies, in essence, on three pleas in law, alleging, first, infringement of the first sentence of Article 94(1) of Regulation 2017/1001, second, infringement of the first sentence of Article 95(1) of that regulation and, third, infringement of Article 8(1)(b) of that regulation.

The first plea, concerning infringement of the obligation to state reasons under the first sentence of Article 94(1) of Regulation 2017/1001

14 The applicant criticises the Board of Appeal for having found that there was a likelihood of confusion by applying incorrectly the findings of the judgment of 7 May 2019, Sona Nutrition v EUIPO – Solgar Holdings (SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA) (T‑152/18 to T‑155/18, not published, EU:T:2019:294; ‘the judgment in Solgar’). According to the applicant, it is not possible to come to any conclusion on the likelihood of confusion on the basis of paragraphs 42 to 45 of that judgment, on which the Board of Appeal relied, because the Court annulled the decisions at issue in that judgment on the basis of an error of law without having carried out a substantive examination of the likelihood of confusion. Consequently, the applicant is of the view that the contested decision does not contain an adequate statement of reasons and must be annulled.

16 It must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. This obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. The obligation has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision (see, to that effect, judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65, and of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 29 and the case-law cited).

17 Further, the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will affect the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea alleging an inadequate statement of reasons or a lack of such a statement (see judgments of 30 May 2017, Safa Nicu Sepahan v Council, C‑45/15 P, EU:C:2017:402, paragraph 85 and the case-law cited, and of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 187 (not published) and the case-law cited).

18 In the present case, after having recalled the relevant factors to be taken into account for a global assessment of the likelihood of confusion and the position under the case-law relating to ‘weak marks’, which results in there being no likelihood of confusion, the Board of Appeal nevertheless found that the situation can differ, as in the present case, where the earlier mark was entirely included within the sign applied for and was a dominant element thereof. In that connection, it based its conclusion on the circumstances of the case which gave rise to the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), which it found to be highly similar to the present situation.

19 However, it is clear that the applicant’s arguments relating to the circumstances of the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), being transposed to the present dispute are intended, in actual fact, to challenge the merits of the Board of Appeal’s assessment of the likelihood of confusion. Irrespective of whether the application by analogy of that judgment to the present case is correct on the substance, there is nothing to suggest that the applicant was not in a position to understand the reasons given in the contested decision and to challenge them before the Court. On the contrary, the reasons given in that decision are adequate in that they made it possible for the applicant to defend its rights, as is clear from the arguments in its action against that decision, and they enabled the Court to exercise its jurisdiction to review the legality of that decision, as is apparent from the analysis in the context of the third plea below.

The second plea, alleging that the Board of Appeal went beyond the scope of its review for the purposes of the first sentence of Article 95(1) of Regulation 2017/1001

21 The applicant submits that the Board of Appeal took into account matters which went beyond the claims put forward by the parties and therefore went beyond the scope of its review. Noting that the intervener has not challenged the Opposition Division’s finding that the word element ‘korres’ of the mark applied for would be perceived by the relevant public as a business name, the applicant argues that that finding became binding on the Board of Appeal, as it did not come within the scope of the appeal brought before it. According to the applicant, the Board of Appeal therefore found, without reason and exceeding its powers, that the word element ‘korres’ would be perceived as a ‘phantasy name’ referring to a specific product line covered by the earlier mark.

23 As a preliminary point, it must be borne in mind that there is functional continuity between the various adjudicating bodies of EUIPO on the one hand, and the Boards of Appeal on the other. It follows from that functional continuity that, in the review of decisions taken by the departments of EUIPO hearing the application that the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal. The review undertaken by the Boards of Appeal is not limited to the lawfulness of the contested decision, but, by virtue of the devolutive effect of the appeal proceedings, it requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time. Thus, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal before it, the Board of Appeal is called upon to carry out a full re-examination of the merits of the opposition, in both law and fact (see judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).

24 Under the first sentence of Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties. The fact remains that the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41).

25 It is also apparent from Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) that, in inter partes proceedings, matters of law not raised by the parties are to be examined by the Board of Appeal where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation 2017/1001 having regard to the facts, evidence and arguments presented by the parties (see, by analogy, judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑611/21, EU:T:2022:739, paragraph 58).

26 First, it should be noted that 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 goods or services covered (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).

27 The assessment of the similarity of the goods and signs at issue is therefore a matter of law necessary to ensure the correct application of Article 8(1)(b) of Regulation 2017/1001, so that the adjudicating bodies of EUIPO must examine those matters, of their own motion if need be (see, to that effect, order of 22 September 2022, Primagran v EUIPO – Primagaz (prımagran), T‑624/21, not published, EU:T:2022:620, paragraph 36).

28 The examination of the elements making up the signs at issue is a preliminary step which is necessary for and inextricable from the assessment of the similarity of those signs. The Board of Appeal was therefore required, in order to ensure the correct application of Article 8(1)(b) of Regulation 2017/1001, to examine the element ‘korres’ of the mark applied for, even if, as the applicant claims, that element had not been challenged before the Board of Appeal.

29 Second, although the intervener had asserted before the Board of Appeal that the element ‘korres’ of the mark applied for was the applicant’s business name, it also stated that it was devoid of meaning. Similarly, the Opposition Division had also found that that element was devoid of meaning.

30 Since, in the present case, the element devoid of meaning is a fanciful element, the applicant is wrong to submit that that assessment had not been relied on or was not part of the appeal before the Board of Appeal.

31 Third, as recalled in paragraph 23 above, the scope of the Board of Appeal’s review is not limited to the review of the lawfulness of the contested decision, but requires a reappraisal of the dispute as a whole on all the matters of fact and of law which were raised either by the parties before the Opposition Division or the Board of Appeal, or by the Board of Appeal of its own motion. As a result, irrespective of whether the assessment of the element ‘korres’ is substantially correct, which will be ascertained in the context of the third plea below, the Board of Appeal was not bound by the findings of the Opposition Division that had not been challenged before it by the parties, but was fully entitled to examine that element of the mark applied for.

32 Consequently, the Board of Appeal did not go beyond the scope of its review or infringe the first sentence of Article 95(1) of Regulation 2017/1001, with the result that the second plea must be rejected as unfounded.

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

33 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means 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.

34 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

35 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).

36 It is appropriate to examine whether the Board of Appeal was right to find that there was a likelihood of confusion in the light of those considerations.

37 In the present case, the Board of Appeal considered that the relevant public consisted of the general public in France. In addition, it considered that the goods covered by the earlier mark and those covered by the mark applied for were identical, given that they overlapped. It also found that the signs at issue had a low degree of conceptual similarity.

39 However, the applicant complains that the Board of Appeal incorrectly assessed the level of attention of the relevant public and the rules on similarity of the signs at issue where the signs coincide in a weakly distinctive element and differ in a distinctive element. Accordingly, the Board of Appeal artificially created an overall impression leading to the incorrect finding of a likelihood of confusion.

40 The intervener disputes the applicant’s arguments. However, EUIPO is of the view that, as far as the third plea is concerned, the action should be dismissed only if the Court were to find that the element ‘hydra-biome’ of the mark applied for and the element ‘hydrabio’ of the earlier mark have an average degree of distinctiveness for part of the relevant public. Otherwise, if those elements were to be regarded by the Court as having weak distinctive character, as they were by the Board of Appeal, EUIPO maintains that that Board made several errors of assessment in the light of the case-law, which must lead to a finding that there is no likelihood of confusion and, therefore, to annulment of the contested decision.

41 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

42 The Board of Appeal observed that the Court has previously confirmed that the goods concerned in Class 3 are everyday consumer goods which are aimed at the general public with an average level of attention. Accordingly, even though consumers tend to be attentive in the acquisition of body care products, it found that the level of attention of the relevant public was at least average.

43 According to the applicant, the Board of Appeal described the level of attention of the relevant public as being at least average in order to avoid saying that it is, in fact, above average.

44 EUIPO disputes the applicant’s argument, while the intervener is of the view that an average level of attention is equivalent to an above average level of attention of the relevant public.

45 It is clear, as also noted by EUIPO, that the applicant does not raise any argument relating to the level of attention of the relevant public. It merely asserts that that level of attention is above average, referring to the case-law cited by the Board of Appeal which, according to the applicant, supports its claim. However, none of the judgments referred to by the Board of Appeal in paragraphs 18 to 21 of the contested decision makes it possible to find that the level of attention of the public is above average in respect of goods in Class 3.

46 Consequently, the applicant does not show that the Board of Appeal erred in its assessment in finding that the level of attention of the relevant public was, in essence, average.

47 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).

48 In the present case, the earlier mark is a word mark consisting of the single word element ‘hydrabio’.

49 The mark applied for is a figurative mark consisting of the word element ‘hydra-biome’ in blue standard uppercase typeface placed within a white circle, which will be perceived by the relevant public as a top view of an open cream box displaying the texture of white cream. In addition, the upper part of the sign contains the word elements ‘est.’, ‘korres’ and ‘1996’. The elements ‘est.’ and ‘1996’ are in grey and very small typeface surrounding the element ‘korres’, which is written in a white uppercase standard typeface and larger than the elements ‘est.’ and ‘1996’ but smaller than the element ‘hydra-biome’. All these elements are placed within a blue square.

50 The Board of Appeal found that the graphic features of the sign applied for, that is, the white circle, the blue background and the various sizes and colours of the word elements, will be perceived as decorative. Regarding the word elements, it noted that the element ‘hydra-biome’ was more dominant visually due to its size and position, but that the element ‘korres’ remained relevant visually in the overall impression of the sign, because it had no meaning and was likely to be regarded as a ‘phantasy name’, and was therefore distinctive. It added that the elements ‘est.’ and ‘1996’ were descriptive of the year in which the company that owns the mark applied for had started its commercial activity. It therefore found that the element ‘hydra-biome’ was ‘the most relevant … element’ of the sign applied for.

51 Regarding the elements ‘hydrabio’ of the earlier sign and ‘hydra-biome’ of the sign applied for, the Board of Appeal stated that, even failing a meaning in French and the fact that the specialised word ‘biome’ would probably not be recognised, a significant part of the relevant public would break down those elements to perceive the weakly distinctive terms ‘hydra’ and ‘bio’. It therefore found that those elements had limited distinctiveness, as they would be perceived by that part of the public as referring to hydration and to the natural characteristics of the goods concerned.

52 The applicant disputes the Board of Appeal’s assertion that a significant part of the relevant public does not know the meaning of the term ‘biome’. According to the applicant, that public will not isolate the element ‘bio’ from the term ‘biome’, as that element and that term are different words.

53 EUIPO submits that the fact that the term ‘biome’ of the sign applied for appears in the general and non-specialised French dictionary Larousse means that the relevant public can be assumed to recognise that term. Were that term to be broken down in a fanciful manner in order to perceive the element ‘bio’, it notes that the Board of Appeal does not provide any explanation as to why the element ‘me’, which is also a word in French or even a basic word in English, would be disregarded. In EUIPO’s view, it appears unlikely that such an element would not be awarded any weight, as suggested by the Board of Appeal. EUIPO also argues, contrary to the Board of Appeal, that the element ‘korres’ has a greater ability to draw the attention of the public due to its higher degree of relative distinctiveness than the weakly distinctive ‘hydra-biome’, which the Board of Appeal had found to be the most relevant element of the sign applied for from a visual standpoint.

54 In the alternative, EUIPO submits that, since the Board of Appeal acknowledged that the elements ‘hydrabio’ and ‘hydra-biome’ of the signs at issue were of limited distinctiveness for part of the relevant public, it follows that those elements could be regarded, for the remainder of that public, as having an average degree of distinctiveness, leading to a likelihood of confusion for that part of that public.

55 The intervener maintains that the elements ‘est.’, ‘korres’ and ‘1996’ will not attract the public’s attention and will be viewed as a reference to the company that owns the mark applied for, not as the mark itself. In addition, it is of the view that at least a significant part of the relevant public will break down the word elements ‘hydrabio’ and ‘hydra-biome’ of the signs at issue and will perceive the terms ‘hydra’ and ‘bio’. At the hearing, in addition to stating that the element ‘korres’ should be ignored in favour of the element ‘hydra-biome’, it argued that the word ‘biome’ belongs to the specific vocabulary of a scientific field that the public does not understand. Accordingly, the intervener submits that it is easier for that public to isolate the known term ‘bio’, as the word ‘biome’ is too specific to attract its attention, with the result that the perception of the elements ‘hydrabio’ of the earlier sign and ‘hydra-biome’ of the sign applied for as being weakly distinctive will be the same.

56 As a preliminary point, it must be pointed out that, according to the case-law, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into word elements which, for him or her, have a specific meaning or which resemble words known to him or her. It has also been stated that it was possible for that consumer to break down a word sign even if only one of the elements making up the sign is familiar to it (see judgment of 5 June 2019, Biolatte v EUIPO (Biolatte), T‑229/18, not published, EU:T:2019:375, paragraph 42 and the case-law cited). Moreover, that consumer will understand the meaning produced by signs composed of several apparently separate word elements or a single word element by grouping several words together when that understanding requires no particular intellectual effort (see, to that effect, judgment of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 62).

57 In the first place, regarding the earlier sign, although it is true that, as observed by the Board of Appeal, the element ‘hydrabio’ does not exist as such in French, the relevant public will nevertheless easily recognise the term ‘hydra’, which it will understand as referring to hydration, and the term ‘bio’, which it will understand as referring to the idea of environmental protection, the use of natural materials or even ecological manufacturing processes, as the Court has previously acknowledged on several occasions (see, to that effect, judgments of 29 April 2010, Kerma v OHIM (BIOPIETRA), T‑586/08, not published, EU:T:2010:171, paragraph 25; of 21 February 2013, Laboratoire Bioderma v OHIM – Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraphs 45 and 46; and of 10 September 2015, Laverana v OHIM (BIO FLUIDE DE PLANTE PROPRE FABRICATION), T‑568/14, not published, EU:T:2015:625, paragraph 17).

58 It follows that the word element ‘hydrabio’ has weak distinctive character in so far as the relevant public will perceive it as designating the hydrating and natural characteristics of the goods covered by the earlier mark, which has not, moreover, been challenged by the parties.

59 However, contrary to the Board of Appeal’s finding, the perception of the element ‘hydrabio’ as suggestive may apply to only part of the relevant public. The elements ‘hydra’ and ‘bio’ are common prefixes in basic French vocabulary and are, moreover, common to many other EU languages, which will be easily recognisable to all of that public. As a result, it is appropriate to reject EUIPO’s line of argument in the alternative, referred to in paragraphs 40 and 54 above, that the present plea must be rejected only if the element ‘hydrabio’ has an average degree of distinctiveness for another part of the relevant public.

60 In the second place, regarding the sign applied for, it must first be stated that the parties do not challenge the Board of Appeal’s assessment that the graphic characteristics of that sign, set out in paragraph 50 above, will be perceived as decorative. Similarly, it is common ground that the elements ‘est.’ and ‘1996’ are descriptive.

61 Second, neither do the parties call into question the distinctiveness of the element ‘korres’. The fact that the applicant submits on several occasions in its application that that element will be perceived by the relevant public as its business name, not as a ‘phantasy name’ devoid of meaning, is irrelevant as regards the distinctiveness of that element. Moreover, although the elements ‘est.’ and ‘1996’ surrounding the element ‘korres’ can suggest that that element refers to the applicant’s business name, as the intervener submits, those two elements, unlike the element ‘korres’, are too small to be perceived easily.

62 Third, the word element ‘hydra-biome’ will be broken down by the relevant public into the prefix ‘hydra’, which is weakly distinctive in respect of the goods concerned and common to the earlier sign, and the term ‘biome’. Further, that breakdown will be made easier on the part of the public by the presence of the hyphen which distinctly separates the prefix ‘hydra’ from the term ‘biome’.

63 More specifically, the term ‘biome’ is a word from the French dictionary Larousse which means, according to the definition given by the intervener and EUIPO at the hearing, a ‘biogeographical region extending under the same climate’.

64 However, even though the inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public (judgment of 16 December 2010, Rubinstein v OHIM – Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 56), the mere presence of a term in a general and non-specialised French dictionary does not mean that the relevant public can be assumed automatically to recognise that term, contrary to EUIPO’s submission. Accordingly, given that the parties do not dispute that the word ‘biome’ is a specific scientific term, the Board of Appeal was correct to find that a significant part of the general public will not understand the meaning of that term.

65 Although it is true that it cannot be ruled out that part of the relevant public will recognise the first syllable of the term ‘biome’ as the weakly distinctive prefix ‘bio’, this does not mean that the public will restrict that term to that prefix alone in order to regard them as equivalent.

66 Irrespective of EUIPO’s argument, which the Board of Appeal allegedly failed to examine, regarding whether the syllable ‘me’ may also be perceived in isolation by the relevant public as a French or English word, that syllable is not, in any event, without impact on the element ‘hydra-biome’, since its addition to the prefix ‘bio’ creates a different word. Therefore, even for the significant part of the relevant public which will not understand the term ‘biome’, the addition of the syllable ‘me’ to the prefix ‘bio’ will certainly give rise to uncertainty as to the meaning of that term and, accordingly, particular intellectual effort within the meaning of the case-law cited in paragraph 56 above.

67 Fourth, regarding the dominant elements of the sign applied for, the element ‘hydra-biome’, on account of its size and central position, will be regarded as the most dominant visual element. Nevertheless, as acknowledged by the Board of Appeal, the element ‘korres’ will not be ignored despite its position and smaller size, as it remains visible and relevant to the overall impression produced by the sign applied for, particularly on account of its distinctiveness recognised in paragraph 61 above.

68 Having regard to the foregoing, the Court finds that the Board of Appeal erred in its assessment in finding, on account of the lack of impact of the letters ‘m’ and ‘e’ of the element ‘hydra-biome’, that that element would be perceived in the same way as the element ‘hydrabio’ of the earlier sign.

69 The Board of Appeal found that the dominant word element ‘hydra-biome’ of the sign applied for contained all eight letters of the earlier mark placed in the same order. According to the Board of Appeal, although the additional elements of the sign applied for had to be taken into consideration, they were insufficient to counteract the similar overall visual impression created by the highly similar elements ‘hydrabio’ and ‘hydra-biome’, given that the earlier mark was entirely included within the sign applied for. It therefore found that that the signs at issue had a lower than average degree of visual similarity.

70 The applicant is of the view that there is a low degree of visual similarity between the signs at issue, given the multitude of visual and verbal differences between the signs and the fact that they differ by the element ‘korres’, the distinctiveness of which has been established.

71 The intervener maintains that, even if there are some differences between the signs at issue, they are both dominated by ‘the … same word sequence [“hydrabio”]’. In any event, the figurative elements of the sign applied for, which are purely decorative and devoid of distinctive character, do not affect how the dominant element ‘hydra-biome’ is perceived directly. Thus, according to the intervener, the applicant cannot claim that those signs have a low degree of similarity.

72 As a preliminary point, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

73 In the present case, it is not disputed that the eight-letter sequence of the word element ‘hydrabio’ of the earlier sign is included in the same order in the dominant word element ‘hydra-biome’ of the sign applied for; the fifth letter ‘a’ is only separated from the sixth letter ‘b’ by a hyphen in that sign.

74 In that connection, it is apparent from the case-law that, where the sole component of the earlier mark is included in its entirety within the mark applied for, the signs at issue are partially identical in such a manner as to create a certain impression of visual similarity on the part of the public (see, to that effect, judgments of 26 March 2015, Radecki v OHIM – Vamed (AKTIVAMED), T‑551/13, not published, EU:T:2015:191, paragraph 51, and of 23 April 2015, Iglotex v OHIM – Iglo Foods Group (IGLOTEX), T‑282/13, not published, EU:T:2015:226, paragraph 65).

75 In addition, the weakly distinctive character of an element which is common to two signs reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account (see, to that effect, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 67 and the case-law cited).

76 In that connection, the sign applied for differs from the earlier sign, first, by the two final letters ‘m’ and ‘e’ of the element ‘hydra-biome’ – which cannot be held to be without impact, as stated by the Court in paragraph 66 above – second, by the distinctive and non-negligible element ‘korres’ and, third, by the graphic characteristics such as the colour blue and the white circle perceived as a top view of an open cream box.

77 As a result, even if the sequence of letters making up the weakly distinctive element ‘hydrabio’ of the earlier sign is included within the element ‘hydra-biome’ of the sign applied for, that shared sequence will have limited impact on the overall visual impression of the signs at issue; the similarity of those elements will be counteracted to a certain extent by the differing elements.

78 Consequently, the Board of Appeal was right to find that the signs at issue had a lower than average degree of visual similarity.

79 The Board of Appeal found that there was phonetic similarity stemming from the elements ‘hydrabio’ and ‘hydra-biome’ of the signs at issue; the addition of the letters ‘m’ and ‘e’ at the end of the sign applied for cannot take away that similarity and the hyphen is irrelevant in that connection. It found, in relation to the elements ‘est.’, ‘korres’ and ‘1996’, that, first, the elements ‘est.’ and ‘1996’ would not be pronounced, in view of their descriptive character and in order to ‘economise on words’ and, second, even if the element ‘korres’ were pronounced, this would not create sufficient difference to counteract the similarity arising from the elements ‘hydrabio’ and ‘hydra-biome’. Therefore, it found that the signs at issue had a high degree of phonetic similarity, or an average degree of phonetic similarity if the element ‘korres’ were pronounced.

80 The applicant argues that the signs at issue do not, in any event and for any part of the public, have a high degree of phonetic similarity, because the element ‘korres’ will always be pronounced given the role played by the initial part of those signs and the independent distinctive role of that element as a business name within the mark applied for.

81 The intervener is of the view that, in so far as the common element ‘hydrabio’ is sufficiently long and has the greatest impact on the relevant public, the signs at issue are highly similar phonetically. According to the intervener, the difference created by the element ‘korres’ is not sufficient to counteract that similarity, even if that element is pronounced, which it disputes.

82 According to case-law, signs are phonetically similar where the earlier mark is included in its entirety within the mark applied for (see, to that effect, judgment of 2 February 2012, Almunia Textil v OHIM – FIBA-Europe (EuroBasket), T‑596/10, not published, EU:T:2012:52, paragraph 38 and the case-law cited).

83 In the present case, the signs at issue coincide phonetically in the common eight letter sequence ‘h’, ‘y’, ‘d’, ‘r’, ‘a’, ‘b’, ‘i’ and ‘o’, but differ in the final letters ‘m’ and ‘e’ in the word element ‘hydra-biome’ of the sign applied for. Those additional letters reduce the phonetic similarity between the elements ‘hydrabio’ and ‘hydra-biome’, given the additional syllable resulting from those letters in the pronunciation of those elements.

84 In addition, the signs at issue differ in the elements ‘est.’ and ‘1996’; it is common ground that those elements will not be pronounced by the relevant public, having regard to the fact that they are descriptive and that they are barely visible, and in the light of the intent to ‘economise on words’ to which that public is accustomed in that regard.

85 Last, regarding the word element ‘korres’, the Board of Appeal found, in essence, that part of the relevant public might pronounce that element, while it is not likely to be pronounced by another non-negligible part of that public. In that connection, it is clear that the applicant does not call into question the Board of Appeal’s finding that, even if it were pronounced, the difference created by that element is not sufficient to counteract the phonetic similarity between the signs at issue.

86 However, contrary to the applicant’s claim, it is not certain whether the word element ‘korres’ of the sign applied for will always be pronounced. It is clear from the case-law that, despite the fact that the relevant public tends to read from top to bottom and from left to right, that public may also be influenced by a notable difference in size between the word elements in question capable of conferring a clearly dominant character on one of them (see, to that effect, judgment of 6 December 2013, Premiere Polish v OHIM – Donau Kanol (ECOFORCE), T‑361/12, not published, EU:T:2013:630, paragraph 28).

87 Thus, even though the word element ‘korres’ appears in the upper – and therefore initial – part of the sign applied for and is distinctive, it cannot be ruled out that it will not be pronounced by a non-negligible part of the relevant public, which might identify the sign by the sufficiently long and dominant word element ‘hydra-biome’.

88 Consequently, the Board of Appeal was right to find that the signs at issue had an average degree of phonetic similarity if the element ‘korres’ of the sign applied for was pronounced, and a high degree of phonetic similarity if it was not.

89 The Board of Appeal stated, as a preliminary point, that the issue in the present case was whether the distinctive element ‘korres’ of the sign applied for could outweigh the shared sequence ‘hydrabio’, which is weakly distinctive but in a larger typeface. Citing several judgments regarding ‘weak marks’ in which the Court had found that there was no likelihood of confusion where the common element was weakly distinctive and the goods were similar or identical, the Board of Appeal nevertheless found that the situation might be different where, as in the present case, the earlier mark was included in its entirety within the mark applied for and was a dominant element. In that regard, it refers to the case which gave rise to the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), in which the Board of Appeal’s finding relating to the distinctive element ‘solgar’ attracting more attention had not been followed by the Court and the contested decisions finding that there was no likelihood of confusion had been annulled.

90 Therefore, the Board of Appeal found that even though the relevant public could distinguish between the signs at issue due to the presence of the distinctive element ‘korres’ in the contested sign, that public could believe that it concerns a variation or sub-mark of the earlier mark for another product line. It therefore came to the conclusion that there was a likelihood of confusion.

91 First, the applicant complains that the Board of Appeal deprived the element ‘korres’ of the independent distinctive function it fulfils as a business name. According to the applicant, the element ‘hydra-biome’ will be perceived as a specific range of products, so that the relevant public will not believe that the goods covered by the mark applied for originate from the undertaking of the proprietor of the earlier mark. Second, it submits that, where an earlier mark with weak distinctive character is included within a mark applied for, the comparison of the signs at issue must focus on the elements which differ and their capacity for distinctiveness, and that the degree of similarity between those signs must be high enough to justify a finding of a likelihood of confusion. However, in the present case, given that those signs coincide in a weak distinctive element and differ in the distinctive element ‘korres’, they are similar only to a low degree overall. Third, it submits that the comparison of the present dispute to the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), is irrelevant on the grounds set out in paragraph 14 above. Accordingly, there is no likelihood of confusion despite the identity of the goods concerned.

92 EUIPO endorses, in essence, the applicant’s arguments regarding, first, the fact that the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), is irrelevant to the present case and, second, the finding that there was no likelihood of confusion, given the recent case-law of the Court of Justice and the General Court from which it is apparent that a likelihood of confusion is ruled out where the similarities between the marks at issue stem from weakly distinctive elements alone.

93 The intervener endorses, in essence, the Board of Appeal’s finding that the signs at issue are similar overall, in that the earlier mark reproduced within the mark applied for is dominant in the overall impression created by that mark, and that there is a likelihood of confusion. It adds that the applicant’s argument relating to the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), is not relevant, since the subsequent Board of Appeal decisions in that case also found that there was a likelihood of confusion.

94 As a preliminary point, it must be borne in mind that, in accordance with the principle of the interdependence between the factors to be taken into consideration when examining the likelihood of confusion, the ratio legis of trade mark law is to strike a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services, on the other (see judgment of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 117 and the case-law cited; see also, by analogy, judgment of 27 April 2006, Levi Strauss, C‑145/05, EU:C:2006:264, paragraph 29).

95 Whilst the more distinctive the earlier trade mark, the greater will be the likelihood of confusion, the opposite is also true. With regard to a trade mark with a weak distinctive character, and which thus has a lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking, the degree of similarity between the signs should be high to justify a likelihood of confusion, or this would risk granting excessive protection to that trade mark and its proprietor (see judgment of 7 June 2023, Cassa Centrale v EUIPO – Bankia (BANQUÌ), T‑368/22, not published, EU:T:2023:309, paragraph 69 and the case-law cited). That excessive protection could therefore adversely affect the attainment of the objectives pursued by trade mark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case (judgment of 18 January 2023, YOGA ALLIANCE INDIA INTERNATIONAL, T‑443/21, not published, EU:T:2023:7, paragraph 118).

96 In that connection, where the earlier trade mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such likelihood exists (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; see also, by analogy, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55).

97 Where the elements of similarity between two signs arise from the fact that they share a component which has weak inherent distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).

98 Since the weak inherent distinctive character of the earlier mark is not disputed by the parties, it is appropriate to assess the likelihood of confusion in the light of those principles.

99 First, it must be borne in mind that the earlier mark is included in its entirety within the first eight letters of the element ‘hydra-biome’ of the mark applied for, with the result that those marks share a weakly distinctive sequence made up of the prefixes ‘hydra’ and ‘bio’.

100 Second, the Court has established in paragraph 68 above, contrary to the Board of Appeal’s finding, that the addition of the final letters ‘m’ and ‘e’ to the element ‘hydra-biome’ of the mark applied for could not be without impact on the overall impression of that element. The perception of the similar elements ‘hydrabio’ and ‘hydra-biome’ of the marks at issue cannot therefore be entirely equivalent.

101 Third, the Board of Appeal found that the sign applied for differed only by the hyphen and the final letters ‘m’ and ‘e’ of the element ‘hydra-biome’. However, that finding also disregards the non-negligible presence and distinctive role of the element ‘korres’ within the overall impression produced by that sign.

102 In that connection, the Board of Appeal’s assessment relating to the different and distinctive element ‘korres’ of the mark applied for, which could be perceived as a variation or sub-mark of the earlier mark for another product line, must also be rejected.

103 If, as acknowledged by the applicant and the intervener, the element ‘korres’ of the mark applied for were perceived by the relevant public as a business name, such use may strengthen that mark’s capacity to identify the goods 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 (judgment of 13 October 2021, Sedus Stoll v EUIPO – Kappes (Sedus ergo+), T‑429/20, not published, EU:T:2021:698, paragraph 55).

104 Therefore, despite its position and smaller size, the word element ‘korres’ of the mark applied for cannot be regarded as a variation or sub-mark of the earlier mark, given that it is common ground that it is distinctive, which makes it possible to determine the commercial origin of the goods covered by that mark.

105 Fourth, regarding the application of the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), to the present case, it must be stated that, in that judgment, the Court found that the Board of Appeal erred in law regarding the determination of the distinctive character of the earlier mark. That error had subsequently led to the annulment of the contested decisions, without the Court having carried out a substantive examination of the likelihood of confusion. Therefore, as the applicant and EUIPO submit, the findings in that judgment are irrelevant to the Board of Appeal’s finding that, when the earlier weakly distinctive mark is included in its entirety within the mark applied for, there is a likelihood of confusion.

106 Further, the intervener’s argument that the likelihood of confusion was confirmed by the Board of Appeal to which the case was remitted after the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), is also irrelevant. The legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001 according to the circumstances of each case and not on the basis of previous EUIPO decision-making practice, which cannot, in any event, bind the Courts of the European Union (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77). The subsequent Board of Appeal decisions consequent to the judgment of 7 May 2019, Solgar (T‑152/18 to T‑155/18, not published, EU:T:2019:294), cannot therefore be taken into consideration.

107 It follows from all the foregoing that, first, in addition to the non-negligible impact of the addition of the letters ‘m’ and ‘e’ within the element ‘hydra-biome’ of the mark applied for, the marks at issue share only a weakly distinctive sequence which, according to the case-law cited in paragraphs 96 and 97 above, will have a merely limited impact on the global assessment of the likelihood of confusion. Moreover, having regard to the similarity between those marks which is lower than average visually, average or high phonetically, and low conceptually, their degree of global similarity cannot be high in the light of the weak distinctive character of the earlier mark and cannot therefore lead to a likelihood of confusion within the meaning of the case-law cited in paragraph 95 above.

108 Consequently, the Court finds that the Board of Appeal was wrong to conclude that there was a likelihood of confusion on the part of the relevant public.

109 Having regard to all the foregoing considerations, it is appropriate to uphold the applicant’s third plea and, as a result, annul the contested decision.

110 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.

111 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant, despite one of EUIPO’s two heads of claim, submitted in the alternative, contending that the action be upheld.

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 March 2022 (Case R 1410/2021-5);

2. Orders EUIPO to bear its own costs and to pay those incurred by Korres AE – Fysika Proionta;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Korres v EUIPO - Naos (EST. KORRES 1996 HYDRA-BIOME) (EU trade mark - Judgment) [2023] EUECJ T-328/22 (13 September 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T32822.html Cite as: EU:T:2023:533, [2023] EUECJ T-328/22, ECLI:EU:T:2023:533

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