M. I. Industries v EUIPO - Natural Instinct (Nature's Variety Instinct) (EU trade mark - Judgment) [2019] EUECJ T-287/18 (20 September 2019)

Judgment Background to the dispute On 25 June 2015, the applicant, M. I. Industries, Inc., filed an application for registration with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are in Class 31 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Animal foodstuffs; pet foods; pet treats’. The trade mark application was published in Community Trade Marks Bulletin No 144/2015 of 4 August 2015. On 3 November 2015, the intervener, Natural Instinct Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on, inter alia, United Kingdom figurative mark No 2 626 609, as reproduced below, which was filed on 3 July 2012 and registered on 7 December 2012: The goods covered by United Kingdom figurative mark No 2 626 609 on which the opposition was based are in Class 31 and correspond to the following description: ‘Foodstuffs for dogs and cats; dog food; cat food; dog biscuits; bones and chewing bones for dogs; treats (foods) for dogs and cats; litter for dogs and cats’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001). On 26 June 2017, the Opposition Division upheld the opposition based on Article 8(1)(b) of Regulation No 207/2009 in its entirety. On 26 July 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. By decision of 6 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. In particular, the Board of Appeal took the view, like the Opposition Division, that the goods at issue were identical, that the relevant public consisted of the general public in the United Kingdom, which displayed an average level of attention with regard to the goods concerned, and that the signs at issue were visually and conceptually similar to an average degree and phonetically similar to at least a low degree. It found, in particular, that the dominant and most distinctive elements in the signs at issue were ‘instinct’ in the mark applied for and ‘natural instinct’ in the earlier mark. Likewise, it took the view that the applicant had not substantiated, to the requisite legal standard, its claims that, first, pet owners purchased food for those pets with significant care and brand loyalty and, secondly, the terms ‘natural’ and ‘instinct’ are commonly used to designate goods in Class 31. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should dismiss the action. At the hearing, the intervener requested that the applicant be ordered to pay the costs, a point which was noted in the minutes of the hearing. When questioned on that head of claim, the applicant submitted that it was belated. Law In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. The applicant submits that there is no likelihood of confusion in the present case and complains that the Board of Appeal did not carry out an overall assessment of the signs at issue. EUIPO and the intervener dispute the applicant’s claims. Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). It is in the light of the abovementioned principles that the present action must be examined. The relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In the present case, the Board of Appeal found, in essence, that the relevant public consisted of the general public in the United Kingdom, which displayed an average level of attention with regard to the goods at issue. The applicant submits that the relevant public’s level of attention is high in the present case. In particular, it maintains that, since it is the usual practice of pet owners to buy the same pet food over a considerable period of time, consumers buy the goods at issue with significant care and brand loyalty. In response to the Board of Appeal’s finding that the applicant has not provided any evidence to support the abovementioned argument, the applicant contends that no evidence is needed to prove that, as a general rule, pet owners are loyal to a brand. In support of its claims relating to the loyalty of pet owners as regards the food for those animals and the attention which they pay to that food, the applicant relied, inter alia, on documents which the intervener had provided as annexes to its opposition. Likewise, in order to support the submission that consumers pay particular attention to goods if those goods have an impact on human health and that of pets, it referred to the judgment of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD) (T‑599/13, EU:T:2015:262 ). EUIPO maintains that the question whether the choice of pet owners when purchasing the respective goods in Class 31 is influenced by brand loyalty is a matter of fact, which the applicant had to prove by providing evidence. Furthermore, it states that the case-law relating to the brand loyalty of tobacco consumers cannot be applied by analogy in the present case and that the Court has recently held (judgment of 26 June 2018, Staropilsen v EUIPO — Pivovary Staropramen (STAROPILSEN; STAROPLZEN) , T‑556/17, not published, EU:T:2018:382 , paragraph 26) that there were no reasons to consider that the average consumer of beer displayed a high level of attention. In the present case, first, since the earlier mark is registered in the United Kingdom and in view of the nature of the goods at issue, the Board of Appeal’s finding that the relevant public is the general public in the United Kingdom must be upheld. As regards, secondly, that public’s level of attention, it must be stated that the applicant has admittedly claimed that pet owners are loyal to a brand, with the result that their level of attention is high. However, those claims have not, as has already been found by the Board of Appeal in paragraph 16 of the contested decision, in any way been substantiated. In that regard, the applicant’s argument that no evidence relating to the brand loyalty of pet owners had to be provided must be rejected. In accordance with the usual rules for establishing facts before the Courts of the European Union ruling on matters concerning EU trade marks in inter partes proceedings, EUIPO’s examination is, as is apparent from Article 95(1) of Regulation 2017/1001, restricted to the facts, evidence and arguments provided by the parties and the relief sought. Consequently, the applicant cannot reasonably maintain that it did not have to substantiate its claims relating to the brand loyalty of pet owners. Likewise, the judgment of 7 May 2015, GELENKGOLD (T‑599/13, EU:T:2015:262 ), which the applicant relied on for the purposes of proving that the relevant public displays a high level of attention on account of the impact of animal foodstuffs on the health of pets is irrelevant in the present case. As EUIPO maintained at the hearing, that case-law concerns pharmaceutical and veterinary preparations or preparations for medical purposes in Class 5 and is not relevant with regard to the contested goods, which are in Class 31. In any event, the Court has already held that average consumers of the goods at issue, that is to say, the general public, display an average level of attention (judgment of 20 November 2017, Cotécnica v EUIPO — Visán Industrias Zootécnicas (cotecnica OPTIMA) , T‑465/16, not published, EU:T:2017:825 , paragraph 26). As regards the documents that the intervener provided in the course of the administrative proceedings, to which the applicant referred at the hearing, and from which it is, in the applicant’s submission, apparent that the goods at issue are goods of superior quality to which consumers will pay particular attention, it is sufficient to state, as maintained by EUIPO, that those documents relate to the goods marketed under the earlier mark and not to the description of the goods covered by that mark. That description does not contain any reference as to any particular quality. It must be borne in mind that, in the context of opposition proceedings, it is the description of the goods covered by the marks at issue and not the goods actually marketed under those marks that must be taken into account (see judgment of 27 September 2018, TenneT Holding v EUIPO — Ngrid Intellectual Property (NorthSeaGrid) , T‑70/17, not published, EU:T:2018:611 , paragraph 50 and the case-law cited). Consequently, the Board of Appeal was right in finding that the relevant public’s level of attention was average. The comparison of the goods As far as the comparison of the goods is concerned, the Board of Appeal endorsed the Opposition Division’s finding that the goods covered by the marks at issue were identical. That finding, which the applicant has expressly declared it is not contesting, is correct and must be upheld. The comparison of the signs The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). In the present case, the marks which have to be compared are two figurative marks. As the Board of Appeal pointed out, the earlier mark consists of the elements ‘natural instinct dog and cat food as nature intended’ written in a stylised font. The element ‘natural instinct’ is significantly larger in size and is written above the expression ‘dog and cat food as nature intended’. The mark applied for consists of a round-shaped figurative element, the words ‘nature’s variety’ written in a small font and the word ‘instinct’ written below in a significantly larger font. The distinctive and dominant elements of the signs at issue As regards the earlier mark, the Board of Appeal found, in paragraph 21 of the contested decision, that the element ‘natural instinct’ constituted the dominant and most distinctive element of that mark. It stated, first, that that element was represented in a significantly larger font and, secondly, that the element ‘dog and cat food as nature intended’ was likely to be perceived as a slogan relating to the nature and characteristics of the goods at issue. As regards the mark applied for, the Board of Appeal found that it was the element ‘instinct’ which was, due to its size, dominant. According to the Board of Appeal, that element was also the most distinctive element because the element ‘nature’s variety’ had a laudatory connotation in relation to animal food since it would be understood as referring to a large selection of goods of natural origin. The applicant particularly disputes the Board of Appeal’s findings relating to the distinctive character of the element ‘instinct’. It maintains that that term, which is seen by the public as relating to animals, has only a low degree of distinctiveness with regard to the goods at issue since it is a commonly used word in the sector concerned and is not very original or distinctive. The applicant submits that, contrary to the Board of Appeal’s findings, it is not necessary to demonstrate that the trade marks actually coexist on the market in order to prove that that word is a word that is used repeatedly in marks that cover goods in Class 31. It makes, in essence, the same comments as regards the distinctiveness of the element ‘natural’. The applicant adds that the intervener has admitted, in other opposition proceedings, that the element ‘instinct’ has a low degree of distinctiveness with regard to goods in Class 31. It is necessary, first of all, to assess the distinctive character of the elements in the signs at issue. As the Board of Appeal found, the element ‘dog and cat food as nature intended’, which is contained in the earlier mark, is likely to be perceived as a slogan relating to the nature and properties of the goods at issue, namely natural cat and dog food. That element therefore has a low degree of distinctiveness. The same is true of the element ‘nature’s variety’ in the mark applied for, which, as the Board of Appeal found, has a laudatory connotation in relation to animal food. As far as the element ‘instinct’ is concerned, the Board of Appeal found that it was the most distinctive element of the mark applied for and was included in the most distinctive element of the earlier mark. The applicant claims that it has only a low degree of distinctiveness with regard to the goods at issue because it is a commonly used word in the sector concerned. It refers, in that regard, to registrations which contain that term. In that regard, it must be borne in mind, as is apparent from settled case-law, that the relevant factor for the purposes of disputing the distinctive character of an element is its actual presence on the market and not its presence in registers or databases (see judgments of 25 May 2016, Ice Mountain Ibiza v EUIPO — Marbella Atlantic Ocean Club (ocean beach club ibiza) , T‑5/15, not published, EU:T:2016:311 , paragraph 35 and the case-law cited, and of 8 November 2017, Pempe v EUIPO — Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS) , T‑271/16, not published, EU:T:2017:787 , paragraph 98 and the case-law cited). Furthermore, according to settled case-law, the coexistence of earlier marks can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks on which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 25 May 2016, ocean beach club ibiza , T‑5/15, not published, EU:T:2016:311 , paragraph 36 and the case-law cited). However, in the present case, the applicant confined itself to referring to the existence of trade mark registrations containing the terms ‘instinct’ and ‘natural’ and to maintaining that the existence of those registrations showed, on its own, that, at the very least, those elements are not very original and distinctive as regards the goods at issue. The claims that the term ‘instinct’ is frequently used in the sector concerned and is included in numerous registered trade marks are therefore insufficient to prove that that element has a low degree of distinctiveness with regard to the goods at issue. The claim that the intervener itself admitted, during opposition proceedings B 2181272, that the element ‘instinct’ has a low degree of distinctiveness with regard to goods in Class 31 has no bearing on the present case. Although it is true that it is apparent from the case-law that, in view of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not and that the way in which those principles are applied must be consistent with respect for the principle of legality, which precludes a person who files an application for registration of a sign as a trade mark from relying, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (judgment of 23 October 2015, Hansen v OHIM (WIN365) , T‑264/14, not published, EU:T:2015:803 , paragraph 38; see also, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM , C‑51/10 P, EU:C:2011:139 , paragraphs 73 to 76), that case-law cannot apply to the arguments that the parties made in the proceedings that led to the adoption of those decisions. Next, in assessing the configuration of the signs at issue, the Board of Appeal came to the conclusion that the elements ‘instinct’ in the mark applied for and ‘natural instinct’ in the earlier mark were dominant. That finding is correct because, on account of their larger size and the configuration of the signs at issue, those elements clearly dominate the overall impression created by the marks at issue. Lastly, the applicant cannot claim that the Board of Appeal erred as regards the elements ‘natural’ or ‘nature’s’. It must be pointed out that the Board of Appeal found, in essence, in paragraphs 22 and 25 of the contested decision, that, as the applicant has observed, those elements had a low degree of distinctiveness with regard to the goods at issue on account of their laudatory nature. It follows that the Board of Appeal did not err in finding that the elements ‘instinct’ and ‘natural instinct’ are the dominant and most distinctive elements of the signs at issue. The visual, phonetic and conceptual comparison of the signs As regards, first, the visual comparison of the signs, the Board of Appeal, after analysing all the elements in the signs at issue, found, in paragraph 23 of the contested decision, that the signs were similar to an average degree overall, on account of the coincidence in the element in common, ‘instinct’, which is dominant in the mark applied for and is one of the dominant elements in the earlier mark. The applicant maintains that the signs at issue are different and complains that the Board of Appeal did not carry out an overall assessment of those signs. It stresses, in particular, that the differences resulting from the figurative elements of the signs at issue, namely the spelling, the representation of a leaf above the letter ‘r’ in the earlier mark and the figurative element consisting of a circle in the mark applied for, will be perceived by consumers and that the signs contain additional word elements. Likewise, the applicant submits that the first words in the signs at issue are ‘natural instinct’ and ‘nature’s variety’ and refers to the principle recognised in the case-law that consumers tend to focus their attention on the first part of the signs. It adds that, since it is not permissible to break down signs artificially, it is not correct to find that the two signs are similar on account of the coincidence in the sequence of letters ‘n’, ‘a’, ‘t’, ‘u’ and ‘r’ in those signs. However, contrary to what the applicant claims, it cannot be maintained that the Board of Appeal did not assess the signs at issue as a whole. As is apparent from the contested decision (paragraph 23), before concluding that they were similar, the Board of Appeal did indeed mention all the elements in the signs at issue. It found, inter alia, that the elements ‘dog and cat food as nature intended’ in the earlier mark and ‘nature’s variety’ and the graphic element in the mark applied for were of secondary importance and that the signs had the element ‘instinct’ in common. As regards the importance of the beginnings of signs in the relevant public’s perception of those signs, it is true that the case-law has recognised that the first part of the word elements of a mark is likely to attract the consumer’s attention more than the following parts (see judgment of 29 October 2015, Giuntoli v OHIM — Société des produits Nestlé (CREMERIA TOSCANA) , T‑256/14, not published, EU:T:2015:81 , paragraph 49 and the case-law cited). However, it must be stated that, in view of the configuration of the signs at issue and as is also pointed out by EUIPO, the public will focus its attention on the dominant elements of the signs at issue and not on the element ‘nature’s variety’, which, placed at the top of the mark applied for, is written in markedly smaller letters. As regards the applicant’s argument that it is not correct to find that the signs are similar in so far as they have the letters ‘n’, ‘a’, ‘t’, ‘u’ and ‘r’ in common, it must be stated that the Board of Appeal found that that coincidence in the elements ‘nature’s’ and ‘natural’ had a weaker influence on the overall impression, since the element ‘nature’s’ in the mark applied for was smaller and less prominent. Moreover, even though the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, that does not prevent that consumer, when faced with a word sign, even within a composite mark, from breaking it down into word elements which, for him, suggest a specific meaning or resemble words known to him (see judgment of 21 September 2017, The Logistical Approach v EUIPO — Idea Groupe (Idealogistic) , T‑620/16, not published, EU:T:2017:635 , paragraph 75 and the case-law cited). Consequently, the applicant cannot reasonably criticise the Board of Appeal for finding that there is a similarity between the elements ‘nature’s’ and ‘natural’. It follows that the Board of Appeal did not err in finding that the signs at issue were visually similar to an average degree. As regards, secondly, the phonetic comparison of the signs, the Board of Appeal found, in paragraph 24 of the contested decision, that they were phonetically similar to at least a low degree on account of the coincidence in the element ‘instinct’. In particular, it found that the mark applied for was likely to be pronounced as ‘nature’s variety instinct’ or ‘instinct’, whereas the earlier mark would be pronounced as ‘natural instinct’. The applicant maintains that the Board of Appeal did not examine the marks as a whole and submits that the signs at issue are dissimilar, relying on the different pronunciation, in English, of the first words in each sign and the different numbers of syllables in those signs. In the present case, the Board of Appeal’s finding that the signs at issue are phonetically similar to at least a low degree must be upheld. First of all, it must be stated that the Board of Appeal, when it found that the signs at issue were likely to be pronounced respectively as ‘natural instinct’ and ‘nature’s variety instinct’ or ‘instinct’, implicitly, but necessarily, took into account the natural tendency of consumers to abbreviate long signs and not to pronounce all the word elements (see, to that effect, judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM — Harry’s New York Bar and Harrys Pubar (HARRY’S BAR) , T‑711/13 and T‑716/13, not published, EU:T:2016:82 , paragraph 94 and the case-law cited). Consequently, the applicant’s argument relating to the different lengths of the signs at issue must be rejected. Next, the Board of Appeal found, correctly, that the signs coincided in the presence of the element ‘instinct’. In that regard, it must be borne in mind that, as has been stated in paragraph 58 above, that element is dominant or included in the dominant element in the signs at issue. Likewise, the applicant’s argument that, in the mark applied for, the consumer will first have to pronounce the elements ‘nature’s variety’ is not contradicted by the analysis of the Board of Appeal, which expressly admitted, in paragraph 24 of the contested decision, that the mark applied for might be pronounced as ‘nature’s variety instinct’ or ‘instinct’. Lastly, the Board of Appeal’s finding, referred to in paragraph 68 above, is not called into question by the applicant’s argument that the public in the United Kingdom will pronounce the elements ‘nature’ and ‘natural’ differently. The Board of Appeal’s finding is not based on any coincidence in the pronunciation of those elements, with the result that the applicant’s argument is ineffective. As regards, thirdly, the conceptual comparison of the signs, the Board of Appeal found, in paragraph 25 of the contested decision, that the signs were similar to an average degree since they both evoke the notion of instinct and allude to nature, but that that latter concept was, however, laudatory in relation to the goods at issue. It took the view that the signs differed in the notion of ‘variety’ in the mark applied for, which is, however, also laudatory in relation to the goods at issue. The applicant submits that the signs at issue are conceptually dissimilar since each of them has a conceptual meaning that evokes a distinct idea. It maintains that the earlier mark refers to the inherent characteristics of an animal or to an instinct produced by nature, thus suggesting that animals should be fed with food that they select as a result of their natural instinct, whereas the mark applied for evokes the idea of a selection of natural or organic foods. It also adds that United Kingdom consumers will perceive the difference in the meanings of the terms ‘natural’ and ‘nature’. It must, first of all, be pointed out, as stated by the Board of Appeal, that both signs evoke the notion of instinct. In that regard, it must be noted, as the intervener correctly claimed at the hearing, that the applicant fails to mention the element ‘instinct’ when it analyses the meaning of the mark applied for. Next, even though the meanings of the terms ‘nature’ and ‘natural’ are not the same in English, the definitions provided by the applicant make it possible to conclude that there is a similarity between them, with the result that the Board of Appeal’s finding that both signs allude to nature is correct. Lastly, the Board of Appeal was right in pointing out that the signs at issue differ in the notion of ‘variety’, which is contained in the mark applied for. That difference cannot counteract the similarities between the signs. The Board of Appeal was therefore right in finding that the signs are conceptually similar to an average degree. The likelihood of confusion A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (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). In the present case, the Board of Appeal found, in paragraph 30 of the contested decision, that, in view of the identity of the goods, the similarity of the signs arising from the presence of an identical term, namely ‘instinct’, the normal inherent distinctive character of the earlier mark and the average level of attention of the relevant public, there was a likelihood of confusion. As regards the distinctive character of the earlier mark, for reasons of procedural economy, the Board of Appeal, like the Opposition Division, did not examine the intervener’s claims relating to that mark’s enhanced distinctiveness, but based its analysis on the inherent distinctive character of that mark, which it categorised as normal. The applicant submits that, on account of the differences between the marks, one of the conditions for the application of Article 8(1)(b) of Regulation 2017/1001 is not satisfied, with the result that there is no likelihood of confusion in the present case. It adds that there would be no likelihood of confusion even if the signs at issue were considered to be similar to a low degree and the level of attention of the relevant public were to be considered to be average. In the present case, as has been held in paragraphs 35, 37, 67, 70 and 82 above, the Board of Appeal was right in finding that the signs at issue are visually and conceptually similar to an average degree and phonetically similar to at least a low degree, that the goods at issue are identical and that the relevant public’s level of attention with regard to the goods at issue is average. So far as concerns the degree of distinctiveness of the earlier mark to be taken into account, it must be categorised as normal, as the Board of Appeal found in paragraphs 26 and 27 of the contested decision (see paragraph 85 above), a finding which the applicant does not, moreover, in any way dispute. In view of all of those factors, the Board of Appeal was right in finding that there is a likelihood of confusion in the present case. The applicant’s argument that there would be no likelihood of confusion even if the level of attention of the relevant public were average and the signs at issue were considered to be similar to a low degree cannot call that finding into question. As has been stated in paragraph 87 above, the level of attention of the relevant public taken into account in assessing the likelihood of confusion is average and the signs, contrary to the applicant’s submission, are visually and conceptually similar to an average degree. Consequently, the present plea must be rejected and 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. The applicant has been unsuccessful and both EUIPO and the intervener have sought an order for costs against it. Having regard to the fact that the intervener’s head of claim relating to the costs was submitted only at the hearing, it must be pointed out that, according to the case-law, it is open to the parties to apply for costs subsequently, even at the hearing, although they did not do so when the action was lodged (see judgment of 13 May 2015, Group Nivelles v OHIM — Easy Sanitairy Solutions (Shower drainage channel) , T‑15/13, EU:T:2015:281 , paragraph 142 and the case-law cited). That head of claim submitted by the intervener is therefore admissible. The applicant must therefore be ordered to pay the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by those parties. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders M. I. Industries, Inc. to pay the costs. Gratsias Labucka Ulloa Rubio Delivered in open court in Luxembourg on 20 September 2019. E. Coulon D. Gratsias 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