ALO jewelry CZ v EUIPO - Cartier International (ALOve) (EU trade mark - Judgment) [2022] EUECJ T-288/21 (06 July 2022)

Judgment By its action based on Article 263 TFEU, the applicant, ALO jewelry CZ s. r. o., seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 March 2021 (Case R 2679/2019‑5) (‘the contested decision’). Background to the dispute On 15 May 2017, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign: The mark applied for designated the goods and services in Classes 14, 35, 36, 40 and 42 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, for each of those classes, to the following description: – Class 14: ‘Alloys of precious metal; Goods in precious metals or coated therewith, not included in other classes; Medallions (jewellery); Necklaces [jewellery]; Pendants; Bracelets [jewellery, jewelry (Am)]; Chains, bands and bracelets for watches; Earrings; Pearls for making jewelry; Platinum [metal]; Rings [jewellery, jewelry (Am)]; Chains [jewelry]; Ivory jewelry; Jewellery boxes and containers made of precious metals or precious stones; Works of art of precious metal; Gold, unwrought or beaten; Silver, unwrought or beaten; Amulets [jewellery, jewelry (Am)]; Brooches [jewellery]; Diamonds; Gemstones; Semi-precious stones; Jewels; Precious metals (unworked or semi-worked); Semi-finished articles of precious stones for use in the manufacture of jewellery; Paste jewellery [costume jewelry (Am)]; Cuff links; Tie-pins; Ornamental pins; Tie pins; Watches; Clocks; Clock cases; Jewelry of yellow amber; Hat jewellery; Trinkets made of precious metals or precious stones (articles of jewellery); Trinkets of silver (articles of jewellery); Clockworks; Stopwatches; Chronometers; Chain mesh purses of precious metals and precious stone’; – Class 35: ‘Organisation of jewellery shows as sales promotion; Business management in respect of precious stones and jewellery; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet; Commercial brokerage of organisation of jewellery shows as sales promotion, business management in the field of precious stones, jewellery, retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet’; – Class 36: ‘Jewellery appraisal; Valuation of diamonds; Precious stone appraisal; Appraisal of semi-precious stones’; – Class 40: ‘Processing and treating of materials, in particular processing and abrasing of diamonds, precious stones and semi-precious stones; Manufacture of jewellery by processing precious metals and/or diamonds, precious and semi-precious stones; Engraving; Abrasion; Leather working; Laser scribing; Polishing precious and semi-precious stones; Providing information on the processing and treatment of materials’; – Class 42: ‘Verifying and certifying diamonds, precious and semi-precious stones and jewellery with regard to character and quality, production, processing and finishing method, country of origin, processing and distribution chain between precious stone or precious metal being extracted and being introduced into the retail network; Determining the origin of diamonds, precious stones and semi-precious stones; Determining the quality of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the origin of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the quality of diamonds, precious stones and semi-precious stones; Designing the appearance of jewellery and goods of precious metals; Designing jewellery; Hosting web sites; Design of interior decor; Provision of search engines for the internet; Quality control; Material testing; Packaging design; Recovery of computer data; Authenticating works of art; Industrial design’. On 29 January 2018, the intervener, Cartier International AG, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above. The opposition was based on the earlier international registration designating the European Union, No 1029142, concerning the figurative mark reproduced below, registered on 26 October 2009, in respect of goods in Class 14 and corresponding to the following description: ‘Goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks, watch straps, watch bracelets, boxes of precious metals for watches and jewellery’: The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001. On 27 September 2019, the Opposition Division partially upheld the opposition in respect of all the goods and services in Classes 14 and 40 and certain services in Classes 35, 36 and 42, finding that there was a ground for refusal under Article 8(5) of Regulation 2017/1001. As regards the other services in Classes 35, 36 and 42, it rejected the opposition under both Article 8(1)(b) and Article 8(5) of Regulation 2017/1001. On 26 November 2019, the applicant filed an appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal in its entirety. As a preliminary point, it considered, in essence, that the automatic suspension of the opposition proceedings, in view of the fact that the earlier mark was the subject of revocation proceedings brought by the applicant on 11 November 2019, was not appropriate, having regard to the circumstances, the interests of both parties and the lack of any request to that effect by those parties. As to the substance, the Board of Appeal upheld the Opposition Division’s decision, taking the view that all the necessary conditions for the application of Article 8(5) of Regulation 2017/1001 were satisfied in the present case, taking into account, inter alia, first of all, the evidence produced by the intervener demonstrating the reputation, at the very least average, enjoyed by the earlier mark in France for ‘bracelets’ in Class 14, next, the similarity of the marks at issue, the existence of a link between those marks, in view of the degree of proximity or similarity between the goods and services concerned, and, last, the risk that the use of the mark applied for would take unfair advantage of the repute of the earlier mark, in the absence of any due cause relied on by the applicant. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law At the outset, it should be borne in mind that, in view of the date of submission of the application for registration at issue, that is to say, 15 May 2017, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the EU trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 2 and the case-law cited). Accordingly, in the present case, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the applicant and EUIPO, in their arguments, to Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(5) of Regulation No 207/2009, as amended, which is substantively identical. In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009, in that the Board of Appeal erred in its assessment of the reputation of the earlier mark, of the similarity of the marks at issue, of the link between those marks and, last, of the serious risk of detriment to, or of unfair advantage being taken of, the distinctive character or the repute of the earlier mark by the use of the mark applied for. Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of that article, the trade mark applied for is not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services in respect of which it is applied for are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 28 June 2018, EUIPO v Puma , C‑564/16 P, EU:C:2018:509 , paragraph 54 and the case-law cited). It should be noted that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between those marks even though it does not confuse them (see, to that effect, order of 30 April 2009, Japan Tobacco v OHIM , C‑136/08 P, not published, EU:T:2009:282, paragraph 25 and the case-law cited). The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of such a link (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation , C‑252/07, EU:C:2008:655 , paragraph 60 and point 2 of the operative part). While, in the absence of such a link in the mind of the public, the use of the mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark, the existence of such a link is, however, not sufficient, in itself, to establish that there is one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, which constitute the specific condition of the protection of trade marks with a reputation laid down by that provision (see order of 30 April 2009, Japan Tobacco v OHIM , C‑136/08 P, not published, EU:C:2009:282, paragraph 27 and the case-law cited). As regards the relevant public to be taken into consideration, it should be pointed out that that public will vary according to the type of injury alleged by the proprietor of the earlier mark (judgment of 12 March 2009, Antartica v OHIM , C‑320/07 P, not published, EU:C:2009:146, paragraph 46). The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to the average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the mark applied for, must be assessed by reference to the average consumers of the goods or services for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect (see judgment of 7 December 2010, Nute Partecipazioni and La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) , T‑59/08, EU:T:2010:500, paragraph 35 and the case-law cited). It is in the light of those considerations that it is necessary to examine whether, as claimed by the applicant, the Board of Appeal infringed Article 8(5) of Regulation No 207/2009. Reputation of the earlier trade mark The applicant claims that the Board of Appeal erred in assessing the evidence produced by the intervener before the Opposition Division in order to demonstrate the reputation of the earlier mark in the European Union on the date on which the application for the mark applied for was filed, namely on 15 May 2017, for ‘rings and bracelets’ included in Class 14. More specifically, it submits, first, that some items of evidence do not show the earlier figurative mark as it was registered, but that it appears there in its word form, ‘love’, or in the form of a graphic element consisting of a circle divided by a line, and, moreover, that other items of evidence relate to the sign Cartier. Second, those items of evidence are few in number and do not contain any opinion poll, market study, information on the degree of recognition of that mark, or information about the market share which the mark holds in relation to competing goods and services. Third, the applicant submits, last, that the previous EUIPO decisions and those of the Institut national de la propriété industrielle (INPI) (National Institute for Industrial Property, France) confirming the reputation of the earlier mark must not be taken into consideration, since EUIPO is not bound by those decisions and should examine each case on its own merits. EUIPO and the intervener dispute the applicant’s arguments. According to settled case-law, while it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of, and separate from, that of the goods and services for which it is registered. The messages which are conveyed in particular by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor (see, to that effect, judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS) , T‑215/03, EU:T:2007:93, paragraph 35, and of 29 November 2018, Louis Vuitton Malletier v EUIPO – Fulia Trading (LV BET ZAKŁADY BUKMACHERSKIE) , T‑373/17, not published, EU:T:2018:850 , paragraph 20). In order to satisfy the requirement of reputation, an earlier mark must be known by a significant part of the public concerned by the goods or services covered by it (see judgment of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) , T‑8/03, EU:T:2004:358, paragraph 67 and the case-law cited). In examining that condition, all the relevant facts of the case must be taken into consideration, that is to say, in particular the market share held by the earlier mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in promoting the mark, but there is no requirement for that mark to be known by a specific percentage of the relevant public so defined or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory. However, as the above list is merely illustrative, it cannot be required that proof of the reputation of a mark should pertain to all of those elements (see judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA) , T‑288/19, not published, EU:T:2020:201 , paragraphs 29 and 30 and the case-law cited). In that regard, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 16 October 2018, VF International v EUIPO – Virmani ( ANOKHI) , T‑548/17, not published, EU:T:2018:686 , paragraph 96 and the case-law cited). In the present case, the Board of Appeal found that the evidence produced by the intervener before the adjudicating bodies of EUIPO was sufficient and made it possible to establish that the earlier mark enjoyed a reputation, which was at least average, for the ‘bracelets’ in Class 14 in France and therefore in the European Union. In particular, it should be noted that the Board of Appeal, in order to establish the reputation of the earlier mark, relied on the following evidence, adduced in the course of the proceedings before EUIPO: – Annex 2: printouts and screenshots, both dated and undated, of pages from various websites which include articles or publications on the history of the LOVE bracelet dating back to 1969 or subsequent years; – Annex 3: an undated article in French taken from a website, which states the following: ‘ article mythique, le bracelet L[OVE], créé en 1969 et reconnaissable à ses vis apparentes, est décliné en bague, pendentif, collier, sautoir. Des dizaines de références qui animent le marché et permettent d’écouler un volume d’articles à l’antipode de la haute joaillerie ’; – Annex 4.1: an article in French taken from a website, dated 21 July 2017, which states that ‘ le bracelet LOVE by Cartier, créé à New York en 1969 par Aldo Cipullo, est un symbole universel de l’amour et de l’engagement ’ and that that bracelet is also ‘ une pièce de joaillerie emblématique ’; – Annex 4.2: an article in French taken from a website, dated September 2021, which states that ‘ le bracelet L[OVE] de Cartier [est un] bijou emblématique de la maison Cartier ’ and that ‘ ce bijou culte est le parfait symbole de l’attachement amoureux ’; – Annex 5: pictures taken in 2009 during a charity event called ‘Love Day at Cartier’ showing celebrities wearing LOVE bracelets; – Annex 6.1: an extract from a publication on a social network, dated 24 December 2018, showing a celebrity wearing a LOVE bracelet; – Annex 6.2: advertising materials for the promotional campaign called ‘How far would you go for LOVE’, with the participation of various celebrities and in respect of which large amounts of money were spent to promote the LOVE collection; – Annex 7: documents showing the intervener’s involvement in charitable associations by means of profits from the sales of LOVE bracelets; – Annex 8: two decisions of EUIPO of 4 November 2011 (R 23/2015‑1) and of 21 July 2017 (B 2771528), respectively; – Annex 9: four INPI decisions of 21 February and 2 December 2013, respectively, and of 8 April and 19 October 2016, respectively. First of all, as regards the applicant’s argument that some items of evidence refer to the earlier mark in its word form, ‘love’, or in the form of a graphic element consisting of a circle divided by a line, and, moreover, that other items of evidence relate to the sign Cartier, and not to the earlier mark as registered, it should be noted that the proprietor of a registered mark may, in order to make out proof of the particular distinctive character and reputation of that mark, rely on evidence of its use in a different form, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking (see, to that effect and by analogy, judgment of 5 May 2015, Spa Monopole v OHIM – Orly International (SPARITUAL) , T‑131/12, EU:T:2015:257, paragraph 33 and the case-law cited). In the present case, while it is true that, in the evidence produced by the intervener, the earlier mark is used, in particular, in forms different from that in which it was registered, but which nevertheless make it possible to identify that mark in articles on websites, in advertising materials for a promotional campaign and in documents which highlight the intervener’s involvement in charitable works (see Annexes A.2, A.4.1, A.4.2, A.5 and A.7 described in detail in paragraph 27 above), the fact remains that the public concerned by the goods covered by the earlier mark may continue to perceive the goods at issue when they are designated in these different forms as originating from the same undertaking, with the result that those forms can be taken into account in the assessment of the reputation of the earlier mark. Next, as regards Annexes 2 to 7 referred to in paragraph 27 above, it must be held, as the Board of Appeal did (see paragraphs 34 to 36 of the contested decision), that, while it is true that those items of evidence do not contain any indication enabling the precise level of recognition of the earlier mark to be determined, the fact remains that it is apparent from those items of evidence that the sign LOVE has been the subject of intensive use for bracelets since 1969 and that that sign, in so far as it designates those bracelets, is well known and well positioned in France, which constitutes a substantial part of the territory of the European Union within the meaning of the case-law cited in paragraph 24 above. Those items of evidence demonstrate, respectively, the fact that the earlier mark has existed for more than 50 years, the image of excellence of that mark and its prestige, the existence of significant investments in marketing campaigns, advertising campaigns and its reputation in connection with charitable works. Such elements must be regarded as demonstrating the efforts and investments made by the intervener to promote the quality image of the earlier mark. Contrary to what the applicant claims, that conclusion cannot be called into question by the absence of an opinion poll or a market survey, since, in accordance with the case-law referred to in paragraphs 24 and 25 above, it cannot be required that such documents be submitted and the items of evidence referred to in paragraph 27 above are capable of demonstrating to the requisite legal standard that the earlier mark was well known to a significant part of the public concerned by the goods covered by that mark. Last, as regards the previous decisions of EUIPO and the INPI, it must be borne in mind that, in the context of an opposition based on the ground referred to in Article 8(5) of Regulation No 207/2009, the opponent is free, in principle, to choose the form of evidence in support of the reputation of the earlier mark which it considers useful to submit to EUIPO and that the latter is obliged to examine the evidence submitted by the opponent, and cannot reject out of hand a type of evidence on the basis of its form. The opponent is therefore free to adduce, as evidence in support of the reputation of the earlier mark, relied on in support of the opposition, pursuant to that provision, one or more previous EUIPO decisions finding that that mark has a reputation and EUIPO is required, in that case, to take those decisions into consideration (see, to that affect, judgment of 28 June 2018, EUIPO v Puma , C‑564/16 P, EU:C:2018:509 , paragraphs 58 and 69). Where such decisions of EUIPO are detailed as regards the evidential basis and the facts on which the finding that the earlier mark has a reputation is based, they constitute a strong indication that that mark may also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009 in the context of other opposition proceedings (see, to that effect, judgment of 28 June 2018, EUIPO v Puma , C‑564/16 P, EU:C:2018:509 , paragraphs 94 and 95). Such a finding is factual in nature and does not depend on the mark the registration of which is applied for (see, to that effect, judgment of 9 September 2016, Puma v EUIPO – Gemma Group (Representation of a bounding feline) , T‑159/15, EU:T:2016:457 , paragraph 33). Furthermore, it must also be borne in mind that the principles of equal treatment and sound administration require EUIPO to take into account the decisions taken in respect of similar applications and to consider with particular care whether it should decide in the same way or not, in compliance with the principle of legality. That requirement applies both in proceedings concerning an absolute ground for refusal of registration and in those concerning a relative ground for refusal of registration (see, to that effect, judgment of 28 June 2018, EUIPO v PUMA , C‑564/16 P, EU:C:2018:509 , paragraphs 60 to 63). Thus, in so far as those EUIPO decisions, supported by the INPI decisions, also relied on by the intervener, refer, in detail, to the reputation of the earlier mark, in accordance with the case-law referred to in paragraphs 31 and 32 above, the Board of Appeal cannot be criticised for having taken them into account, among other items of evidence, as indications making it possible to substantiate the reputation of the earlier mark. Consequently, the applicant’s argument alleging an incorrect assessment of the evidence relating to the reputation of the earlier mark must be rejected. The comparison of the signs According to the Board of Appeal, first, the earlier mark is a figurative mark, which consists of the word element ‘love’ written in slightly stylised upper-case letters, with the exception of the letter ‘e’, which is written in lower case. In addition, the letter ‘o’ is divided by a horizontal line. Second, the mark applied for is a figurative mark consisting of the word element ‘alove’, the first three letters of which are in upper case and the last two in lower case, with a heart device within the stylised letter ‘o’, thereby reinforcing the perception of the word ‘love’, which is a meaningful word. Furthermore, the Board of Appeal found that the common element of the two signs, namely the term ‘love’, is the element which dominates the overall impression created by each of the figurative marks at issue, since their graphic aspects, which consist of a stylisation of their respective word elements, would be perceived as being purely decorative. The applicant disputes the Board of Appeal’s assessment concerning the perception of the signs at issue. First of all, it submits that the Board of Appeal erred in finding that the earlier mark will be perceived as the word ‘love’ by the relevant public. According to the applicant, that public will perceive the letter ‘o’ as an ‘e’ and, moreover, the letter ‘e’ as an ‘o’, with the result that the earlier mark will be perceived as consisting of the word element ‘leve’ or ‘lovo’. Next, it submits that the Board of Appeal erred in finding that the mark applied for consisted of the word element ‘a’ corresponding to an indefinite article and the word element ‘love’. The mark applied for, it submits, is composed in the same way as the other marks of which the applicant is the proprietor, namely the dominant and distinctive word element ‘alo’ accompanied by a non-distinctive suffix, which is, in the present case, ‘ve’. In that regard, it submits, first, that the actual use of the mark applied for on its website and in its shops shows that the letter ‘o’, which also constitutes the figurative element in the shape of a heart, is represented in pink and that the group of letters ‘alo’ is written in upper case, whereas the group of letters ‘ve’ is written in lower case, which reinforces the perception of the mark applied for as being ‘alove’, and not ‘a love’. Second, it claims that the word element ‘love’ making up the earlier mark has a weak distinctive character with regard to goods in Class 14. Last, the applicant submits that the Board of Appeal erred in its assessment in finding that the signs at issue had an average degree of visual similarity and a high degree of phonetic and conceptual similarity, in that, according to the applicant, those signs are different in those three respects. EUIPO and the intervener dispute the applicant’s arguments. It must be borne in mind that the existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation No 207/2009. That condition requires, in the context both of Article 8(1)(b) and of Article 8(5) of that regulation, the existence, in particular, of elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraphs 51 and 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL) , T‑411/15, not published, EU:T:2017:689 , paragraph 148). However, the degree of similarity required in the context of each of those provisions is different. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists, on the part of the public concerned, a likelihood of confusion between those marks, the existence of such a likelihood is not required for the protection conferred by paragraph 5 of that article. Thus, the types of injury referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lower degree of similarity between the earlier mark and the mark applied for, provided that that degree of similarity is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under one or other of those provisions (judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraphs 53 and 54). In accordance with the case-law referred to in paragraph 17 above, the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of such a link. Next, it must be borne in mind that the comparison of signs must, in relation to the visual, phonetic and conceptual similarities of the signs at issue, be based on the overall impression produced by those signs, taking account, inter alia, of their distinctive and dominant elements (see judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA) , T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited). Likewise, it must be observed that the similarity of the signs at issue must be assessed from the point of view of the average consumer, by reference to the intrinsic qualities of those signs, as registered or as applied for (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT VODKA) , T‑450/13, not published, EU:T:2015:841 , paragraph 95 and the case-law cited). It is in the light of those considerations that it is necessary to examine whether the Board of Appeal acted correctly in finding that the signs at issue are similar. In the present case, it should be noted that, first, the earlier mark is a figurative mark consisting of the word element ‘love’, represented in slightly stylised upper-case letters, with the exception of the letter ‘e’, which is written in lower case and is also stylised. In addition, the letter ‘o’ is divided by a horizontal line. Second, the mark applied for is a figurative mark made up of the word element ‘alove’, the first three letters of which are represented in upper case and the last two in lower case, with the outline of the letter ‘o’ being drawn in the shape of a heart. The distinctive and dominant elements It should be borne in mind that, according to settled case-law, where a trade mark is composed of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the relevant public will more readily refer to the goods at issue by quoting their name than by describing the figurative element of the trade mark (see judgments of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT) , T‑363/06, EU:T:2008:319, paragraph 30 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master) , T‑480/12, EU:T:2014:1062 , paragraph 49 and the case-law cited). It must also be noted that the weak distinctive character of an element of a mark does not necessarily mean that that element cannot constitute a dominant element since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 12 June 2018, Cotécnica v EUIPO – Mignini & Petrini (cotecnica MAXIMA) , T‑136/17, not published, EU:T:2018:339 , paragraph 52 and the case-law cited). In the present case, first, it should be noted that the earlier mark is made up of a single word element, namely the word ‘love’. Second, as regards the mark applied for, it must be held that the mere presence of the letter ‘a’ before the word ‘love’ is not sufficient to rule out the possibility that that word constitutes the dominant element of that mark. In addition, the letter ‘o’ drawn in the shape of a heart refers to the meaning of the word ‘love’ contained in that mark and, therefore, accentuates the presence of that word. Consequently, the Board of Appeal did not err in finding that the word ‘love’ was the dominant element in both signs. As regards the applicant’s argument that a sign should not be broken down artificially where it is not obvious that part or parts of that sign suggest(s) a concrete meaning known to the relevant public, it must be borne in mind that, when perceiving a word sign, the relevant public will break that sign down into word elements which, for that public, suggest a concrete meaning or which resemble words known to it (see, to that effect, judgment of 3 October 2019, Puma v EUIPO – Destilerias MG (MG PUMA) , T‑500/18, not published, EU:T:2019:721 , paragraph 29). In the present case, in the mark applied for, since the word ‘love’ has a concrete and well-known meaning, breaking it down will occur naturally, despite the difference resulting from the use of upper case for the group of letters ‘alo’ and of lower case for the group of letters ‘ve’. Thus, it must be held, as the Board of Appeal did, that the word ‘love’ is present in both of the signs at issue and that it dominates the overall impression created by those signs, given the importance of its relative size in those signs and that the graphic elements will be perceived as decorative, with the result that they will not particularly attract attention. Moreover, contrary to what the applicant claims, the stylisation of the letters ‘o’ and ‘e’ of the earlier mark does not alter the appearance of that mark in such a way that it would be perceived as representing the word ‘lovo’ or ‘leve’. By contrast, the heart-shaped outline of the letter ‘o’ in the mark applied for, conveying the same concept as the word ‘love’, reinforces the dominant character of the element ‘love’ in that mark. As regards the applicant’s argument that the word element ‘love’ making up the earlier mark has a weak distinctive character with regard to the goods in Class 14, it must, first, be borne in mind that a trade mark with a reputation necessarily has distinctive character, at the very least acquired through use (see judgments of 27 November 2008, Intel Corporation , C‑252/07, EU:C:2008:655 , paragraph 73, and of 26 September 2014, Arnoldo Mondadori Editore v OHIM – Grazia Equity (GRAZIA) , T‑490/12, not published, EU:T:2014:840 , paragraph 76). Second, a distinction must be made between the assessment of the distinctive character of an element of a composite mark, which is concerned with that element’s ability to dominate the overall impression created by the mark, and the analysis of the distinctive character of the earlier mark, which is linked to the scope of the protection afforded to such a mark (see, to that effect, order of 27 April 2006, L'Oréal v OHIM , C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraph 58). In the present case, the earlier mark thus has distinctive character acquired through use, which must be taken to be usual. Furthermore, that mark also has inherent distinctive character in view of its meaning for the relevant public, since the word ‘love’ does not refer to a characteristic of the goods covered by that mark. Visual similarity As regards the visual similarity of the signs at issue, the Board of Appeal found that those signs had an average degree of similarity. In that regard, it noted, first, that those signs shared the word ‘love’, which is the single word element of the earlier mark and the larger part (four of the five letters) of the mark applied for. Second, according to the Board of Appeal, those signs differed in the presence of the letter ‘a’, written in upper case, in the sign making up the mark applied for and in figurative elements in both signs, those elements having to be regarded as decorative. Third, it added that, even though the figurative elements contained in the letter ‘o’ of the two signs at issue were different (for similar considerations to those set out in that regard in paragraph 43 above), those elements shared the same feature, namely that they had a figurative element within that letter. Fourth, and last, the Board of Appeal stated that the last letter or letters of those signs was or were written in lower case. The applicant submits that the sign making up the mark applied for will be perceived by the relevant public as consisting of two separate elements, namely the word element ‘alo’, written in upper-case letters, and the word element ‘ve’, written in lower-case letters, and that, according to the case-law, that public will focus on the group of letters ‘alo’ placed at the beginning of that sign. Furthermore, according to the applicant, although the two marks at issue contain similar word elements, the presence of figurative elements will mean that that public will associate the earlier mark with a meaningless sequence of letters, namely ‘leve’ and ‘lovo’, since, in its view, the only legible letters are ‘l’ and ‘v’. EUIPO and the intervener dispute the applicant’s arguments. In that regard, it should be borne in mind that, even though the first component of word elements making up figurative marks may be more likely to catch the consumer’s attention than the following components, that consideration cannot hold good in all cases and cannot, in any event, cast doubt on the principle that the assessment of the similarity of the signs must take account of the overall impression which those signs create (see, to that effect, judgment of 14 July 2016, Preferisco Foods v EUIPO – Piccardo & Savore’ (PREFERISCO) , T‑371/15, not published, EU:T:2016:414 , paragraph 20 and the case-law cited). While it is true that the letter ‘a’ in the mark applied for is not repeated in the earlier mark, that difference alone cannot invalidate the finding of visual similarity, at the very least average, arising, first, from the concordance of the last four letters of that sign and the four letters of the sign making up the earlier mark, forming the word ‘love’, and, second, from the nearly identical length, except for one letter, of those signs (see, to that effect and by analogy, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS) , T‑262/14, not published, EU:T:2015:888 , paragraph 51 and the case-law cited) as well as from the dominant character of the element ‘love’ in the signs at issue. Furthermore, as stated in paragraph 48 above, that finding cannot be called into question by the figurative elements in the two marks, which were correctly found by the Board of Appeal to have a lesser impact on the overall impression in that they are purely decorative, since those elements do not alter, in particular the relevant public’s perception of the earlier mark. Accordingly, the Board of Appeal did not err in concluding that the visual similarity between the two signs at issue was average. Phonetic similarity As regards phonetic similarity, the Board of Appeal found that the signs at issue were highly similar in that their pronunciation coincided in the sound of the common sequence of letters making up the word ‘love’ and differed in the sound of the letter ‘a’ appearing at the beginning of the mark applied for, which cannot, however, outweigh the shared sound resulting from the sequence of letters making up the word ‘love’. The applicant submits that the signs at issue are not pronounced in the same way given that the earlier mark will be perceived by the relevant public as representing the word ‘lovo’ or ‘leve’. EUIPO and the intervener dispute the applicant’s arguments. First of all, it must be borne in mind that, as is apparent from paragraphs 48 and 54 above, the slight stylisation of the letters ‘o’ and ‘e’ of the earlier mark does not make it possible to find, contrary to what the applicant claims, that that mark is perceived by the relevant public as representing the word ‘leve’ or ‘lovo’. Next, it must be held that, notwithstanding the difference consisting of the presence of the prefix comprising the letter ‘a’ at the beginning of the mark applied for, the letter sequence ‘love’, common to the signs at issue, consisting of the same letters appearing in the same order and constituting two syllables, is pronounced in the same way in both signs. Moreover, it has already been held that signs have a phonetic similarity when the earlier mark is entirely included within a mark applied for (see, to that effect, judgments of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR) , T‑112/03, EU:T:2005:102, paragraph 72; of 4 May 2005, Reemark v OHIM – Bluenet (Westlife) , T‑22/04, EU:T:2005:160, paragraph 33; and of 26 January 2006, Volkswagen v OHIM – Nacional Motor (Variant) , T‑317/03, not published, EU:T:2006:27, paragraph 47). The Board of Appeal therefore did not err in its assessment when it found, on the basis of that case-law, first, that there was a phonetic similarity between the signs at issue and, second, in taking into account the minor presence of the letter ‘a’ at the beginning of the mark applied for, that that similarity was high. Conceptual similarity As regards the conceptual similarity, the Board of Appeal found that the signs at issue had a high degree of similarity in that they shared the same concept, conveyed by their common word ‘love’, reinforced by the heart-shaped stylisation of the letter ‘o’ in the mark applied for, whereas the horizontal line present within the letter ‘o’ of the earlier mark did not convey any concept. The applicant submits, in essence, that, conceptually, the relevant public is not able to distinguish the word ‘love’ in the mark applied for, which precludes any similarity with the concept conveyed by that word in the earlier mark. It should be noted, as stated in paragraph 48 above, that the word element ‘love’ is the dominant element in the two marks at issue and that, as observed by the intervener, it is a basic English word which is understood everywhere in the European Union. That word has the following meanings: ‘a strong feeling of affection’; ‘a strong feeling of affection and sexual attraction for someone’; ‘affectionate greetings conveyed to someone on one’s behalf’; ‘a formula for ending an affectionate letter’ and ‘a great interest and pleasure in something’ (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO – Hollandimpex Kereskedelmi és Szolgáltató (Choco Love) , T‑325/15, not published, EU:T:2017:29 , paragraph 57). Accordingly, contrary to what the applicant claims, the mere fact that the letter ‘a’ appears at the beginning of the mark applied for does not deprive the word element of that mark of meaning. That is all the more so given that, as the Board of Appeal correctly noted, the concept of ‘love’ is accentuated by the heart shape of the letter ‘o’ of the mark applied for. The Board of Appeal therefore did not err in its assessment in finding that there was a high degree of conceptual similarity between the signs at issue. The link between the marks at issue As regards the link between the marks at issue, the Board of Appeal found that, on account, first, of the overall similarity between the signs at issue, second, of the presence of the word element ‘love’ of the earlier mark in the mark applied for, as a dominant element, third, of the average degree of reputation of the earlier mark and, fourth, of the fact that the goods and services concerned were identical, similar to an average degree or, at the very least, closely linked, because all of them were strongly associated with the jewellery sector, it was highly likely that an association may be made between those marks in the mind of the relevant public. First, the applicant argues that the signs at issue are visually, phonetically and conceptually dissimilar. Second, it submits that the Board of Appeal erred in finding, on the basis of the evidence provided by the intervener, that the earlier mark enjoyed an average reputation in the European Union with regard to the ‘bracelets’ in Class 14 and a higher than average degree of distinctiveness, given that that mark has only a weak distinctive character with regard to those goods. Third, the applicant maintains that the average consumer’s level of attention is high or very high for the goods concerned, and average to high for some of the services in Classes 35, 36, 40 and 42. The applicant stresses that the Board of Appeal did not take into account the distribution channels in the assessment of whether there is a link between the marks at issue. Fourth and last, the applicant submits that, while it is possible to decipher the concept of love in each of them, that is not sufficient to be able to conclude that there is a link between those two marks. EUIPO and the intervener dispute the applicant’s arguments. The existence of the link referred to in the case-law recalled in paragraph 40 above, together with the existence of a likelihood of confusion, must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue, the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the public concerned, the strength of the earlier mark’s reputation, and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (judgments of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraph 56, and of 10 October 2019, McDreams Hotel v EUIPO – McDonald’s International Property (mc dreams hotels Träumen zum kleinen Preis !) , T‑428/18, not published, EU:T:2019:738 , paragraph 30). In this case, it must be held that, as is apparent from paragraphs 20 to 35 and from paragraphs 50 to 63 above, the reputation of the earlier mark has been proved by the intervener and the existence of an average degree of visual similarity and the existence of a high degree of phonetic and conceptual similarity between the signs at issue have been demonstrated. First of all, as regards the applicant’s argument that the earlier mark does not have a higher than average degree of distinctiveness, it must be held that, where the reputation of a mark is established, it is irrelevant to establish the inherent distinctive character of that mark for it to be considered to have distinctiveness. An earlier mark may possess a particularly distinctive character not only intrinsically, but also because of the reputation which it enjoys with the public (see, to that effect and by analogy, judgment of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24), with the result that, when a mark has acquired a particularly distinctive character because of its reputation, an argument alleging that it has only a very weak intrinsic distinctive character is ineffective in the context of the assessment as to whether there is a link between the marks at issue and, therefore, as to whether there is injury within the meaning of Article 8(5) of Regulation No 207/2009 (see, to that effect, judgment of 17 July 2008, L & D v OHIM , C‑488/06 P, EU:C:2008:420 , paragraphs 65, 67 and 68 and the case-law cited). Next, as regards the applicant’s argument that the level of attention of the relevant public is high or very high on account of the expensive nature of the goods concerned, it should be noted that the Board of Appeal did not err in its assessment in finding that those goods in Class 14 were aimed at both the general public and professionals and that, accordingly, the level of attention of the relevant public varied from average to high. On the one hand, jewellery such as ‘bracelets’ primarily target the general public and, on the other, as regards the other goods in Class 14, which are not purchased regularly by consumers and are generally bought through a salesperson, the level of attention of the average consumer must be taken to be higher than the usual level of attention and, therefore, fairly high (see, to that effect, judgment of 12 January 2006, Devinlec v OHIM – TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 63). Last, as regards the applicant’s argument alleging that the goods and services covered by the marks at issue are marketed through different channels, it must be held that, as the Board of Appeal correctly noted, in so far as the goods and services at issue are either identical, or similar to an average degree, or at the very least closely linked, and in so far as all of them come within the jewellery sector, a link between the marks at issue will be established in the minds of the relevant public. In the light of all of the foregoing, it must be held that the Board of Appeal acted correctly in finding that, on account of the similarity between the signs at issue, the degree of reputation of the earlier mark, at the very least average, and the fact that the goods and services concerned were identical, similar to an average degree or, at the very least, closely linked, an association could be made in the minds of the relevant public between the marks at issue, within the meaning of the case-law referred to in paragraphs 40 and 67 above. The risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark As regards, more specifically, the third condition governing the application of Article 8(5) of Regulation No 207/2009 set out in paragraph 16 above, that condition refers to three distinct and alternative types of risk, that is to say, that the use without due cause of the mark applied for would, first, be detrimental to the distinctive character of the earlier mark, second, be detrimental to the repute of the earlier mark or, third, take unfair advantage of the distinctive character or the repute of the earlier mark. The third type of risk referred to is that the image of the mark having a reputation or the characteristics which that mark projects may be transferred to the goods covered by the mark applied for, with the result that their marketing is made easier by that association with the earlier mark having a reputation. It should, however, be pointed out that, in the context of that type of risk, it is not necessary that there should be a likelihood of confusion between the marks at issue; the relevant public need only be able to establish a link between them without, however, confusing them (see, to that effect, judgment of 22 March 2007, VIPS , T‑215/03, EU:T:2007:93, paragraphs 40 and 41 and the case-law cited). It is apparent from the case-law that the concept of unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, this involves the risk that the image of the mark having a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that their marketing will be made easier by that association with the earlier mark having a reputation (judgments of 22 March 2007, VIPS , T‑215/03, EU:T:2007:93, paragraph 40, and of 17 October 2018, Golden Balls v EUIPO – Les Éditions P. Amaury (GOLDEN BALLS) , T‑8/17, not published, EU:T:2018:692 , paragraph 106). In order to determine whether the use of the mark applied for takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include, in particular, the strength of the earlier mark’s reputation and its degree of distinctive character, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned (see judgment of 14 December 2012, Bimbo v OHIM – Grupo Bimbo (GRUPO BIMBO) , T‑357/11, not published, EU:T:2012:696, paragraph 38 and the case-law cited). Furthermore, it must be borne in mind that, contrary to what is suggested by the applicant, the proprietor of the earlier mark with a reputation is not required to demonstrate, pursuant to Article 8(5) of Regulation No 207/2009, actual and present harm to his or her mark. He or she must only adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment of 11 April 2019, Inditex v EUIPO – Ansell (ZARA TANZANIA ADVENTURES) , T‑655/17, not published, EU:T:2019:241 , paragraphs 41 and 48 and the case-law cited). In the present case, the Board of Appeal found, in essence, taking into account the evidence provided by the intervener, that the image of luxury of the earlier mark would inevitably be transferred to the goods and services at issue covered by the mark applied for, with the result that that mark would be unduly ‘boosted’ as a result of its association with the earlier mark. The applicant submits that the intervener has not submitted convincing evidence or cogent arguments establishing a serious, and not merely hypothetical, risk that the mark applied for would take unfair advantage of the repute or the distinctive character of the earlier mark. Furthermore, it takes the view that the Board of Appeal did not examine with the same care the arguments put forward by each of the parties and therefore favoured to some extent the intervener. Accordingly, it calls into question compliance with the principle of equal treatment. EUIPO and the intervener dispute the applicant’s arguments. In the present case, it must be held, in the first place, that the Board of Appeal did not err in its assessment in establishing that the earlier mark enjoyed a reputation, at the very least an average reputation, for the ‘bracelets’ in Class 14 and that those bracelets were associated with an image of exclusivity and luxury. In the second place, since those ‘bracelets’, on the one hand, and the goods and services covered by the mark applied for, on the other, are identical or similar or, at the very least, closely linked to the jewellery sector, the Board of Appeal also did not err in its assessment in finding that the mark applied for could take unfair advantage of the investments made by the proprietor of the earlier mark in promoting and strengthening the image of that mark. Thus, it must be held that there is, in the present case, the risk, referred to by the case-law cited in paragraph 74 above, that the image of the earlier mark, which has been developed for years by the intervener, may be transferred to the applicant’s goods and services at issue, with the result that, as the Board of Appeal correctly noted, the mark applied for would be unduly ‘boosted’ on account of its association with the earlier mark. In that regard, it must be held that the applicant’s arguments relating to the merely hypothetical nature of the risk of unfair advantage in this case are, within the meaning of the case-law referred to in paragraph 77 above, insufficient to call into question the finding that there is a risk that the applicant, through the use without due cause of the mark applied for, will take unfair advantage of the reputation of the earlier mark. Last, as regards the applicant’s argument that the Board of Appeal did not examine with the same care the arguments put forward by each of the parties, thereby favouring to some extent the intervener, it is sufficient to note that the applicant has not adduced any evidence capable of substantiating its assertion. That argument must therefore be rejected. Accordingly, the applicant’s single plea in law must be rejected and, therefore, the action must be dismissed in its entirety. Costs 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders ALO jewelry CZ s. r. o. to pay the costs. Spielmann Mastroianni Gâlea Delivered in open court in Luxembourg on 6 July 2022. E. Coulon S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII