Certinvest v EUIPO - Kiddinx Studios (Tina) (EU trade mark - Judgment) [2024] EUECJ T-444/23 (13 November 2024)

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( EU trade mark - Opposition proceedings - Application for EU figurative mark Tina - Earlier EU figurative mark Bibi & Tina - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001 )

SC Certinvest SRL, established in Păntăşeşti (Romania), represented by I. Speciac, lawyer,

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

composed of M.J. Costeira, President, M. Kancheva and U. Öberg (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, SC Certinvest SRL, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2023 (Case R 1979/2022‑5) (‘the contested decision’).

2 On 10 July 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3 The mark applied for covered goods in Classes 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:

– Class 3: ‘Non-medicated cosmetics and toiletry preparations; bleaching preparations and other substances for laundry use; all-purpose cleaners; bleaching preparations; detergents; preparations for laundry use; laundry additives; fabric and carpet stain removers; toilet cleaners; window cleaners; dishwashing preparations; rinse agents; non-medicated toilet preparations; soaps; bar soaps; liquid hand soap; toiletries; hand washes; body washes; shower foams and gels; bubble bath preparations; skin cleansers; shampoos and hair conditioners; talcum powder; skin care preparations; skin moisturisers; shaving preparations; shaving soap; pre-shave and aftershave preparations; deodorants and anti-perspirants for personal use; dentifrices, mouth washes; perfumery; perfuming preparations for the atmosphere; wipes, cloths, pads, tissues and sponges impregnated with cleaning preparations; cotton wool; cotton sticks; cosmetic pads, tissues or wipes; pre-moistened cleansing pads, tissues or wipes; essential oils, cosmetics, hair lotions; scouring substances; polishing preparations; abrasives; cleaning preparations’;

– Class 5: ‘Sanitary preparations; disinfectant, antiseptic and antibacterial preparations, including liquids and sprays; germicides; fungicides; wipes impregnated with disinfectant or antibacterial preparations; sanitising wipes; medicated plasters; medicated toiletries; medicated skin and hair care preparations; medicated soaps and skin cleansers; antibacterial soaps and skin cleansers; hand sanitisers; medicated soap and handwash in gel or foam formats; medicated shower and bath gel; medicated shampoo and conditioner for the hair and body; medicated talcum powder; plasters and dressings for medical purposes; materials for dressings; filled first-aid boxes’.

4 On 23 November 2020, the other party to the proceedings before the Board of Appeal, Kiddinx Studios GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5 The opposition was based, inter alia, on the earlier figurative EU mark No 14996871, registered on 23 October 2018, which is reproduced below:

6 The earlier mark covered, inter alia, goods in Classes 3 and 5, corresponding, for each of those classes, to the following description:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; after-shave preparations; antiperspirants; aromatherapy oils; baby oils; baby wipes; bath gel; bath salts; rouges; body creams, lotions, and powders; breath fresheners; bubblebath; cologne; antiperspirants [toiletries]; dusting powder; essential oils for personal use; eyeliner; eyelid shadow; eyebrow pencils; face powder; face creams for cosmetic use; cosmetic facial lotions; facial masks; facial scrubs [cosmetic]; fragrance emitting wicks for room fragrance; fragrances for personal use; styling gels; hair conditioners; shampoo; hair mousse; hair creams; hair spray; hand crème; hand lotions; hand soaps; lip balms [non-medicated]; lipstick; lipstick cases; lip gloss; soaps in liquid form; make-up preparations; mascara; mouthwash; nailcare preparations; nail glitter; nail strengtheners; nail polish; perfume; potpourris [fragrances]; air fragrancing preparations; shaving cream; skin soap; talcum powder; toilet water; skin cream; skin moisturisers; sunscreen preparations; sunscreen preparations; decorative glitter; the aforesaid goods, other than goods for babies and children under three years of age’;

– Class 5: ‘Materials for dressing; plasters, materials for dressings; medicine cases (portable) (filled); infant formula; vitamins for children; herbal tea for medicinal purposes; disinfectants’.

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

8 On 8 August 2022, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 3 above, on the ground that there was a likelihood of confusion.

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

10 By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion in respect of all the goods referred to in paragraph 3 above.

– order EUIPO to continue the registration procedure for the mark applied for in respect of all the goods.

13 The applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In support of its single plea in law, the applicant claims that there is no likelihood of confusion and disputes the Board of Appeal’s comparison of the signs at issue.

15 Under Article 8(1)(b) of Regulation 2017/1001, 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.

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or, as the case may be, 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 (judgment of 4 July 2019, FTI Touristik v EUIPO, C‑99/18 P, EU:C:2019:565, paragraph 20; see also judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 67 and the case-law cited).

17 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 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47 and the case-law cited).

18 It is in the light of those considerations that it must be examined whether the Board of Appeal correctly concluded that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

19 In the present case, the Board of Appeal held, in paragraph 28 of the contested decision, that the relevant territory was the European Union.

20 The Board of Appeal found that the relevant public for the goods in question was made up of the general public and professional consumers, who are likely to exercise an average level of attention in respect of the goods in Class 3 and an above-average level in respect of the goods in Class 5.

21 There is no reason to call into question those assessments, which, moreover, are not disputed by the applicant.

22 The applicant claims that the marks at issue can be regarded as similar only in relation to the goods expressly designated by the earlier mark since, under Article 33(7) of Regulation 2017/1001, ‘goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification’.

24 According to settled case-law, in order to assess the similarity of the goods or the services in question, all the relevant factors relating to them should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use, distribution channels and points of sale, and whether they are in competition with each other or are complementary, acknowledging that they are autonomous criteria capable of being the sole basis for the existence of such a similarity (judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraphs 21 to 23, and of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 53).

25 In the present case, it is sufficient to note that neither the Board of Appeal nor the Opposition Division considered that the goods in question were similar or different on the ground that they appeared in the same class or in different classes under the Nice Classification, contrary to the applicant’s claim.

26 In paragraph 43 of the contested decision, the Board of Appeal noted that the Opposition Division’s comparison of the goods had been conducted according to Article 33(7) of Regulation 2017/1001, taking into account the relevant factors relating to the comparison of the goods including, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition or complementary. In that paragraph it also stated that the Opposition Division had correctly assessed the similarity, taking into consideration the goods expressly designated by the earlier mark, without regarding the goods in question as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

27 In paragraph 45 of the contested decision, the Board of Appeal stated that it saw no obvious reason to reverse the Opposition Division’s correct findings and endorsed the Opposition Division’s reasoning and findings regarding the comparison of the goods in question.

28 It must therefore be held that, as EUIPO contends, the applicant has not raised any argument such as to call into question the Board of Appeal’s findings and reasoning in paragraphs 39 to 45 of the contested decision regarding the comparison of the goods.

29 Consequently, it must be concluded that the Board of Appeal correctly held that the goods are partly identical and partly similar.

30 According to settled case-law, 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 those signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the signs by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgments of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 58 and the case-law cited, and of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 45 and the case-law cited).

31 The Board of Appeal considered, in paragraph 54 of the contested decision, that the most distinctive and dominant elements of the earlier mark were its verbal elements, namely ‘bibi’ and ‘tina’, which were assessed as being distinctive to an average degree in relation to the goods in question, since those terms have no relationship with the goods in Classes 3 and 5 and do not allude to their nature or characteristics. In paragraphs 57 and 58 of the contested decision, the Board of Appeal stated that the weight of the element ‘tina’ in the perception of the earlier mark, as a whole, was no less than that of the element ‘bibi’, even if it was the second verbal element and both elements had identical lengths. It thus considered that the fact that the element ‘bibi’ is placed before the element ‘tina’ was not sufficient to conclude that the element ‘bibi’ is the dominant element of the earlier mark.

32 As regards the ampersand used between the elements ‘bibi’ and ‘tina’, the Board of Appeal found, in paragraph 55 of the contested decision, that its distinctive character was at most weak given that it will be perceived as the symbol used internationally to refer to the word ‘and’.

33 With regard to the mark applied for, the Board of Appeal stated in paragraph 59 of the contested decision that the verbal element ‘tina’ was the most distinctive and dominant element of the mark applied for.

34 Furthermore, in paragraph 56 of the contested decision, the Board of Appeal observed that the figurative elements of both marks – consisting in essence of letters depicted in colour and with a slight stylisation – although not negligible from a visual perspective, will mainly play a decorative role.

35 The applicant claims, in essence, that the overall impression given by the earlier mark is clearly dominated visually and phonetically by the first element ‘bibi’. According to the applicant, the consumer generally pays greater attention to the first part of a word mark and will remember it more clearly than the rest of the mark.

37 According to settled case-law, the distinctive character of an element making up a mark depends on the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 19 September 2019, La Caixa v EUIPO – Imagic Vision (imagin bank), T‑761/18, not published, EU:T:2019:627, paragraph 26).

38 In that regard, it should be recalled that, whilst it has previously been held that the first part of a word mark is liable to attract the consumer’s attention more than the following parts, it has also been ruled that such a consideration cannot be valid in all cases (see judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 51 and the case-law cited).

39 In the present case, although the element ‘bibi’ is placed before the element ‘tina’, it nevertheless has the same number of letters and the same stylisation as the element ‘tina’, which does not allow the conclusion to be drawn that that element will attract the attention of the relevant consumer more than the other. Therefore, the identical number and stylisation of the characters forming those verbal elements of the earlier mark and their linking by the ampersand therefore suggest the creation of a single unit formed of two elements having the same relative weight.

40 Consequently, the applicant’s argument that the relevant public will pay greater attention to the element ‘bibi’, which is placed first in the earlier mark, cannot be accepted.

41 In the light of the above considerations, the Board of Appeal’s assessments that the verbal elements ‘bibi’ and ‘tina’ are the dominant and distinctive elements of the earlier mark and that the element ‘tina’ is the dominant and distinctive element of the mark applied for must be upheld.

42 The Board of Appeal held that the marks at issue coincided in the verbal element ‘tina’ and differed in their figurative elements as well as in the first verbal element, ‘bibi’, and the ampersand of the earlier mark. According to the Board of Appeal, those differences between the marks at issue are not sufficient to counteract the existence of a certain similarity between the signs, given that the mark applied for was included in its entirety in the earlier mark. The Board of Appeal thus concluded that the marks at issue were visually similar to a below-average degree.

43 The applicant disputes that analysis, claiming that there are visible differences between the marks at issue. Thus, the mark applied for is formed only from the verbal and lightly stylised element ‘tina’, written in grey with a blue shade, whereas the earlier mark is formed of the highly stylised word elements ‘bibi’ and ‘tina’, written in red using a special font, and an oversized ampersand. Furthermore, the relevant public will pay greater attention to the first element of the earlier mark ‘bibi’ than the second element ‘tina’. The Board of Appeal therefore made an error of assessment in finding that the marks at issue were visually similar.

45 It must be stated in that regard that the marks at issue both include the verbal element ‘tina’, which is the only element of the mark applied for, implying a certain degree of similarity between the marks at issue.

46 It must also be stated, however, that the signs at issue have a number of visual differences.

47 In the first place, while the verbal element ‘tina’ is common to the signs at issue, it must be stated that it appears in markedly different fonts and colours within the earlier mark and within the mark applied for. Admittedly, it is true that where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). However, the different figurative elements of the signs at issue, essentially consisting of letters depicted in colour and with a slight stylisation, are not negligible in this case, as the Board of Appeal accepted.

48 In the second place, the earlier mark has additional elements, namely the ampersand, which is not distinctive, and the distinctive and co-dominant element ‘bibi’.

49 While it must be acknowledged that the verbal element ‘tina’ appears in the marks at issue, their visual similarity is limited to the presence of that common element. The differences between the signs at issue, resulting from the different graphic representations of the element ‘tina’ and the presence of additional elements in the earlier mark, namely the ampersand and the element ‘bibi’, depicted in a different font, make a significant contribution to distinguishing the marks at issue visually.

50 In the light of the above considerations, the Board of Appeal’s conclusion that the signs at issue, as a whole, are visually similar to a low degree must be upheld.

51 The Board of Appeal held that the pronunciation of the signs coincides in the sound of the element ‘tina’ and differs in the sound of the earlier mark’s first verbal element, ‘bibi’, and its ampersand. According to the Board of Appeal, although the signs at issue have different lengths and numbers of syllables, the fact that the mark applied for is phonetically included in full in the earlier mark creates a phonetic similarity between the signs. The Board of Appeal thus concluded that the marks at issue are phonetically similar to an average degree.

52 The applicant claims that the pronunciation of the marks at issue differs in the sound of their first elements, ‘tina’ and ‘bibi’, respectively. It adds that the pronunciation of the earlier mark is significantly longer than the pronunciation of the mark applied for, given that the latter is formed of two syllables, whilst the former can be divided into five syllables.

54 It should be noted in that regard that the earlier mark, which is composed of the elements ‘bibi’, ‘&’ and ‘tina’, will be pronounced in five syllables, namely ‘bi’, ‘bi’, ‘and’, ‘ti’ and ‘na’, while the mark applied for, which is composed of the single element ‘tina’, will be pronounced in two syllables, namely ‘ti’ and ‘na’, with the result that their length, rhythm and intonation are different and they coincide phonetically only in the syllables contained in the common, distinctive and dominant element ‘tina’.

55 However, the fact that the number of syllables is different is not sufficient to rule out the existence of some phonetic similarity between the signs at issue, as the only element of the mark applied for is included in its entirety in the earlier mark (see, to that effect, judgment of 18 October 2007, AMS v OHIM – American Medical Systems (AMS Advanced Medical Services), T‑425/03, EU:T:2007:311, paragraph 87 and the case-law cited).

56 Consequently, in view of the partial phonetic identity of the signs at issue as a result of the presence of the common verbal element ‘tina’ within the marks at issue, the differences highlighted are not sufficient to prevent the relevant consumer from forming the impression that those marks have a certain degree of phonetic similarity.

57 In the present case, the Board of Appeal concluded that the signs at issue are phonetically similar to an average degree in the light of, in particular, a difference in pronunciation resulting from the additional elements of the earlier mark, and that finding should therefore be upheld.

58 The applicant claims that there is no reason to accept that the marks at issue are conceptually similar.

60 In paragraphs 70 and 71 of the contested decision, the Board of Appeal considered that the conceptual aspect will not decisively influence the comparison of the signs at issue. Furthermore, even if a conceptual comparison were carried out, there would be no conceptual similarity between the signs at issue.

61 Consequently, it must be stated that the Board of Appeal did not establish a conceptual similarity in this case.

62 In those circumstances and in so far as the applicant claims that the Board of Appeal held that the marks at issue are conceptually similar, it must be found that it has misread the contested decision and its complaint must be rejected as having no factual basis.

63 The Board of Appeal concluded in paragraph 73 of the contested decision that the earlier mark had an average distinctive character since the dominant elements of that mark, namely ‘bibi’ and ‘tina’, had no relationship with the goods in Classes 3 and 5 and did not allude to their nature or characteristics. As regards the applicant’s claims that Bibi and Tina are names widely used in the European Union, the Board of Appeal held that those claims were not supported by evidence.

64 The applicant submits that the Board of Appeal erred in concluding that the inherent distinctiveness of the earlier mark was average. In its view, the inherent distinctiveness of the earlier mark is low, given that its verbal elements ‘bibi’ and ‘tina’ are first names widely used in the European Union, including in trade marks covering goods in the classes at issue. According to the applicant, that finding is supported by the EUIPO Guidelines.

66 The assessment by the Board of Appeal, in paragraph 51 of the contested decision, that a significant part of the relevant public will perceive the earlier mark as consisting of two female first names linked by an ampersand is, moreover, not contested by the applicant and should not be called in question.

67 By contrast, in support of its argument that Bibi and Tina are common first names in the European Union, the applicant refers, in paragraph 19 of the application, to two links to the website ‘popular-babynames.com’.

68 It should be noted in this respect that the purpose of actions before the General Court under Article 72 of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal of EUIPO, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

69 It is common ground between the parties that the information and evidence contained in the two links mentioned by the applicant in paragraph 19 of the application were submitted for the first time before the General Court. Consequently, that evidence is inadmissible.

70 Since the applicant did not provide any evidence before EUIPO in support of its argument that the verbal elements of the earlier mark ‘Bibi’ and ‘Tina’ are first names widely used in the European Union, that argument cannot be accepted.

71 That conclusion is not invalidated by the applicant’s reference to the EUIPO Guidelines. The section of the EUIPO Guidelines to which the applicant refers simply states that surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. However, it does not follow from that section that first names generally have a low inherent distinctiveness.

72 As regards the applicant’s argument that there are many EU trade marks which include the elements ‘bibi’ and ‘tina’, it should be stated that the relevant factor for the purposes of contesting the distinctive character of an element is whether it is actually present on the market, and not in registers or databases (judgment of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer), T‑498/10, not published, EU:T:2013:117, paragraph 77). The applicant has not demonstrated the actual presence of the elements ‘bibi’ and ‘tina’ on the market for the goods in question. The applicant’s argument concerning the existence of other trade marks which include the elements ‘bibi’ and ‘tina’ must therefore be rejected.

73 Consequently, as the applicant has not presented any arguments such as to call into question the Board of Appeal’s finding regarding the inherent distinctiveness of the earlier mark, that finding must be upheld.

74 The Board of Appeal held that, taking into account all the relevant factors, there was a likelihood of confusion, even so far as concerns goods in respect of which the relevant public is likely to pay a high level of attention, because the differences between the signs cannot fully divert the relevant public’s attention away from the overall similarity created by the common verbal element ‘tina’.

75 The applicant claims that, bearing in mind the lack of similarity between the marks at issue, the lack of similarity between the goods and services covered by the marks at issue, the low level of protection afforded to trade marks consisting of common names and the fact that the relevant public will focus its attention on the first element of the earlier mark, the Board of Appeal made an error of assessment in finding that there is a likelihood of confusion between the marks at issue. The applicant adds that even if the relevant public were to concentrate its attention on the earlier mark as a whole, consumers will not assume that the goods come from the same undertaking. In that regard, the applicant relies on the EUIPO Guidelines.

77 The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, and the distinctive character of an earlier mark is one of those relevant factors (see judgments of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 51 and the case-law cited, and of 11 November 2020, Deutsche Post v EUIPO – Pošta Slovenije (Representation of a stylised horn), T‑25/20, not published, EU:T:2020:537, paragraph 48 and the case-law cited).

78 The 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).

79 In the present case, it follows from the above that the relevant public consists of the general public and professional consumers exercising a level of attention varying from average to high. The goods covered by the mark applied for are partly identical and partly similar to different degrees. The earlier mark has average inherent distinctiveness. Last, the signs at issue are visually similar to a low degree and phonetically similar to an average degree, while the conceptual comparison remains neutral.

80 It must be noted that, even for a relevant public exercising a high level of attention, it is nevertheless the case that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 21 November 2013, Equinix (Germany) v OHIM – Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54).

81 In those circumstances, applying the principle of interdependence of the relevant factors, in the light of the foregoing, the relevant public will be likely to perceive the mark applied for as another version of the earlier mark rather than as a separate trade mark with a different commercial origin. Since the differences between the signs at issue cannot fully divert the attention of the relevant public from the overall similarity created by the common verbal element ‘tina’, the relevant public could believe that the mark applied for designates a possible second product line of the other party to the proceedings before the Board of Appeal.

82 In the light of the above considerations, it must be held that the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation 2017/1001.

83 That conclusion is not called into question by the applicant’s quote from the EUIPO Guidelines. As EUIPO correctly asserted, that quote concerns a situation in which the signs share a common surname, which is not the case here.

84 In view of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and, accordingly, the action must be dismissed without it being necessary for the Court to rule on the admissibility of the second and third heads of claim raised by the applicant, requesting that the appeal filed against the decision of the Opposition Division be upheld and that the registration of the mark applied for be ordered for all the goods covered by it, respectively.

85 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.

86 Although the applicant has been unsuccessful, EUIPO has applied for costs to be awarded against it only in the event that a hearing is convened. Since no hearing was held, it is appropriate to order each party is to bear its own costs.

2. Orders SC Certinvest SRL and the European Union Intellectual Property Office (EUIPO) to bear their own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Certinvest v EUIPO - Kiddinx Studios (Tina) (EU trade mark - Judgment) [2024] EUECJ T-444/23 (13 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T44423.html Cite as: EU:T:2024:826, [2024] EUECJ T-444/23, ECLI:EU:T:2024:826

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