Makk v EUIPO - Ubati Luxury Cosmetics (PANTA RHEI) (EU trade mark - Judgment) [2021] EUECJ T-501/20 (30 June 2021)

Judgment Background to the dispute On 4 September 2017, the applicant, Mr Stefan Makk, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration designating the European Union in respect of the word mark PANTA RHEI. The goods in respect of which protection of the word mark PANTA RHEI was sought in the European Union are in, inter alia, Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pharmaceuticals, dietetic food supplements for medicinal purposes, nutritional supplements; non-alcoholic beverages adapted for medical purposes for the prevention and curative treatment of eye diseases; non-alcoholic dietetic beverages for medical purposes’. On 15 March 2018, the European Union Intellectual Property Office (EUIPO) received notification of international registration designating the European Union in respect of the word mark PANTA RHEI. The trade mark application was published in European Union Trade Marks Bulletin No 53/2018 of 16 March 2018. On 27 April 2018, the intervener, Ubati Cosmetics, SL, filed a notice of opposition pursuant to Article 46 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1) to registration of the mark applied for in respect, inter alia, of the goods referred to in paragraph 2 above. The opposition was based on earlier EU word mark PANTA RHEI, covering goods and services in Classes 3, 35 and 44 and corresponding, for each of those classes, to the following description: – Class 3: ‘Perfumery; essential oils; cosmetics; hair lotion; soap’; – Class 35: ‘Advertising; business management; business administration; clerical services’; – Class 44: ‘Hygienic and beauty care; cosmetic treatment’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. On 27 August 2019, the Opposition Division partially upheld the opposition in respect of the goods referred to in paragraph 2 above. On 18 October 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division in so far as it had upheld the opposition in respect of the goods referred to in paragraph 2 above. By decision of 9 June 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, it concluded that, on account of the identity of the two signs, the low degree of similarity between the goods referred to in paragraph 2 above and the goods referred to in paragraph 6 above was capable of giving rise to a likelihood of confusion on the part of the relevant public. In order to reach that conclusion, first of all, the Board of Appeal considered, in paragraphs 25 and 26 of the contested decision, that, although the purposes of the goods in Class 5 and Class 3, namely medical and cosmetic, respectively, were not in principle the same, the intended purpose of certain pharmaceuticals in Class 5, in particular skin and hair care preparations, partly coincided with the intended purpose of the cosmetic creams or lotions in Class 3. In addition, in the Board of Appeal’s view, those two types of goods were sold in pharmacies. Thus, the Board of Appeal concluded that the goods covered by the mark applied for in Class 5 and the goods covered by the earlier mark in Class 3 were similar to a low degree. Consequently, and in the light of the principle of interdependence, the Board of Appeal concluded that, since the signs were identical and there was a similarity, if only to a low degree, between the goods referred to in paragraphs 2 and 6 above, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 was inevitable. 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; – reject the application for registration as regards the goods in Class 5; – order the applicant to pay the costs. Law In support of his action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in so far as the Board of Appeal concluded that there was a likelihood of confusion between the signs at issue and, consequently, dismissed his appeal. He submits in particular that the goods covered by the marks at issue are not similar, so that there can be no similarity that could give rise to confusion between those marks. EUIPO and the intervener dispute the applicant’s arguments and contend that the plea should be rejected and, therefore, that the action should be dismissed. According to Article 196(1) of Regulation 2017/1001, international registration designating the European Union is to be subject to opposition in the same way as published EU trade mark applications. 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. 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). 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). The Board of Appeal considered that, in respect of the mark applied for, the goods referred to in paragraph 2 above were addressed both to the public at large and to health and nutrition professionals. As regards the goods and services referred to in paragraph 6 above, the Board of Appeal considered that they were addressed to the public at large. In this respect, the Board of Appeal took the view that, when purchasing the goods referred to in paragraph 2 above, the public at large displayed a high or heightened level of attention as regards health-related goods, even so far as concerns pharmaceuticals purchased without prescription. As for the goods and services referred to in paragraph 6 above, the Board of Appeal concluded that the public at large tended to display at least an average level of attention when purchasing such goods on account, in particular, of aesthetic considerations or personal preferences, sensitivity, allergies or skin and hair type. In the present case, there is nothing in the file that makes it possible to call in question the Board of Appeal’s conclusion that the level of attention of the relevant public would be at least average, an assessment that is not, moreover, disputed by the parties. The comparison of the goods The Board of Appeal concluded, in paragraph 31 of the contested decision, that the goods covered by the mark applied for, which have been referred to in paragraph 2 above, and the goods covered by the earlier mark, which have been referred to in paragraph 6 above, were similar to a low degree. The applicant submits that there cannot be even a low degree of similarity between the goods. In particular, he argues that the intended purpose of the goods in Class 5 cannot coincide with that of the cosmetics, hair lotions and soaps in Class 3. EUIPO and the intervener dispute the applicant’s arguments. According to settled case-law, in assessing the similarity of goods and services, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, PiraÑAM diseño original Juan Bolaños , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). In the present case, the Board of Appeal found, in essence, three factors of similarity between the goods covered by the marks at issue, namely, first, their intended purpose and their common benefits, secondly, their complementary nature and, thirdly, the coincidence in their distribution channels. It is appropriate to examine the similarity between the pharmaceuticals, dietetic food supplements for medicinal use and nutritional supplements, non-alcoholic dietetic beverages for medical purposes and non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases, on the one hand, and the goods covered by the earlier mark, on the other, in the light of the factors identified by the Board of Appeal. Pharmaceuticals in Class 5 The Board of Appeal considered that, in general, the intended purpose of the goods concerned in Classes 3 and 5 was not the same, since the goods covered by the mark applied for had a medical purpose, whereas the goods in respect of which the earlier mark was registered had a cosmetic purpose. Nevertheless, in the Board of Appeal’s view, it cannot be ruled out that a product, while having a medical purpose, can also have cosmetic effects. In that regard, the applicant submits that the pharmaceuticals covered by the mark applied for are defined more narrowly than the cosmetics covered by the earlier mark. Their purpose, namely to prevent diseases, is more specific than that of cosmetics in general. The Court accepted that pharmaceuticals were similar to a low degree to cosmetics, since (i) the purpose of certain pharmaceuticals, such as skin or hair care preparations with medical properties, medicated dentifrices and medicated soaps, coincided with the purpose of cosmetic creams or lotions, dentifrices and soaps not for medical use and (ii) both of those types of goods were sold in pharmacies (see, to that effect, judgment of 13 May 2016, Market Watch v EUIPO – El Corte Inglés (MITOCHRON) , T‑62/15, not published, EU:T:2016:304 , paragraph 27). In the present case, the category of pharmaceuticals is a broad category which groups together goods whose intended purpose or benefits can be similar to those of cosmetics. As EUIPO submits, pharmaceuticals can have both medical and cosmetic properties. Thus, a medicated cream can, like a cosmetic cream, have effects on the appearance of the skin by moisturising it or by soothing inflammation. Furthermore, even a partial overlap between the points of sale may constitute a factor of similarity between the goods concerned, given that there are numerous points of sale, namely pharmacies, where the goods covered by the mark applied for and those covered by the earlier mark are sold (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS) , T‑262/14, not published, EU:T:2015:888 , paragraph 31). In addition, the applicant submits that goods with a cosmetic effect and skin or hair preparations are not covered by his application for registration. That argument must be rejected. As EUIPO and the intervener submit, in the context of opposition proceedings, only the list of goods as it appears in the trade mark application may be taken into account, subject only to any amendments thereto, in accordance with Article 49 of Regulation 2017/1001. Consequently, since the applicant did not amend the list of goods covered by his application for registration, his claims have no factual basis. In that regard, any argument based on the intentions of the applicant regarding the use of the mark applied for would be entirely irrelevant (see, to that effect, judgment of 24 January 2013, Yordanov v OHIM – Distribuidora comercial del frio (DISCO DESIGNER) , T‑189/11, not published, EU:T:2013:34, paragraph 43 and the case-law cited). In the light of the case-law cited in paragraphs 32 and 34 above, the Board of Appeal did not err in taking into account, in order to assess the similarity of the goods at issue, their intended purpose and their distribution channels, or in concluding that the pharmaceuticals referred to in paragraph 2 above and the cosmetics referred to in paragraph 6 above were similar to a low degree. Dietetic food supplements for medicinal use and nutritional supplements The Board of Appeal considered that the dietetic food supplements for medicinal use and nutritional supplements in Class 5 could also have a cosmetic effect and that they could be sold in pharmacies, like the goods in Class 3. In that regard, the applicant submits that, while it is possible that those supplements have a cosmetic effect, their purpose is above all to prevent diseases, and that their method of use differs significantly from that of the goods covered by the earlier mark. In the present case, while the primary objective of the supplements in question is to balance nutritional deficiencies, their use can result in various effects on the appearance of the skin. According to the case-law, there is a factor of similarity between vitamin supplements, which are intended to restore or maintain a healthy appearance and make the complexion radiant, and cosmetics, as they both pursue the common objective of skin care and beauty (see, to that effect, judgment of 28 May 2020, Aurea Biolabs v EUIPO – Avizel (AUREA BIOLABS) , T‑724/18 and T‑184/19, EU:T:2020:227 , paragraph 68). The Board of Appeal, in considering that those supplements could have similar effects, did not therefore make an error of assessment, contrary to what the applicant claims. In addition, the applicant submits that the method of use of the goods referred to in paragraph 2 above differs from that of the goods referred to in paragraph 6 above. However, as EUIPO correctly maintains, according to the case-law, where the difference between the goods arises from the way they are administered, such a difference is not sufficient in itself to prevent those goods from being found to be similar (judgment of 11 November 2009, Bayer Healthcare v OHIM – Uriach-Aquilea OTC (CITRACAL) , T‑277/08, not published, EU:T:2009:433, paragraph 45; see also, to that effect, judgment of 17 October 2006, Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) , T‑483/04, EU:T:2006:323, paragraphs 69 to 71). In addition, the goods covered by the earlier mark and the dietetic food supplements for medicinal use and nutritional supplements covered by the mark applied for can be distributed via the same channels, in particular in pharmacies. The Board of Appeal was therefore correct to conclude that dietetic food supplements for medicinal use and nutritional supplements, on the one hand, and cosmetics, on the other, were similar to a low degree. Non-alcoholic dietetic beverages for medical purposes In the applicant’s view, non-alcoholic dietetic beverages for medical purposes differ from cosmetics in their nature, objective and method of use. The applicant considers, in particular, that the former are medicines consisting of a specific liquid mixture of active substances pre-approved by the medical authorities. As stated by the applicant, dietetic beverages for medical use have the effect of preventing or treating certain health problems. Those goods, like dietetic food supplements for medicinal use, can have as their purpose the improvement of the physical appearance of their user. The cosmetics in Class 3 can also have the effect of improving the appearance of the body. As noted in paragraph 44 above, if the difference is due only to the method of use of the goods, that difference is not sufficient to prevent a finding of similarity between them. In addition, the goods covered by the earlier mark and the goods covered by the mark applied for are both sold in pharmacies. As is the case with dietetic food supplements for medicinal use and nutritional supplements, non-alcoholic dietetic beverages for medical purposes and the goods referred to in paragraph 6 above can have similar effects. The Board of Appeal was therefore correct to conclude that the goods covered by the mark applied for and cosmetics were similar to a low degree. Non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases The Board of Appeal considered that cosmetics constituted a broad category which could contain goods specifically intended for eye care. Thus, in the Board of Appeal’s view, there was an overlap between non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases and that broad category of goods. There was also an overlap between the points of sale. The applicant takes the view that the Board of Appeal erred in concluding that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases were similar to cosmetics. In the applicant’s view, those goods differ in their nature, composition, purpose and method of use. As stated in paragraph 44 above, a difference in the method of use of the goods at issue is not sufficient, in itself, to prevent a finding of similarity between them. The applicant’s argument relating to the difference in the method of use must therefore be rejected. The applicant correctly submits that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases differ from cosmetics as regards their purpose. As the applicant has stated, the former constitute a very narrow category which cannot be included in that of cosmetics. In that regard, EUIPO does not call in question the fact that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases and cosmetics have, in general, a different purpose. However, it submits that the goods in those categories may ultimately have the same benefits, namely an improvement in physical appearance and health benefits. It is true that the purpose of non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases differs from that of cosmetics. Nevertheless, the fact that those goods are sold via the same distribution channels may constitute a factor of similarity unless those channels are non-specialist sales channels such as supermarkets or department stores, where very different kinds of goods may be found, so that consumers cannot automatically believe that they have the same origin (see, to that effect, judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX) , T‑657/13, EU:T:2015:449 , paragraph 83 and the case-law cited). However, in the present case, the goods covered by the mark applied for and the goods covered by the earlier mark will be offered in pharmacies, which, unlike supermarkets or department stores, do not offer such a variety of goods that consumers cannot believe that the goods have the same origin. In that regard, it should be noted that the applicant did not establish that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases could not be displayed on the same shelves as cosmetics. In particular, the applicant also did not establish that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases were medicines which could only be obtained with a prescription. Thus, although the goods at issue differ in particular as regards their purposes, the similarity of the distribution channels is such that the Board of Appeal did not make an error of assessment in concluding that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases, on the one hand, and cosmetics, on the other, were similar to a low degree. 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). In the present case, the parties agree that the signs are identical and do not dispute the Board of Appeal’s decision on that point. 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). The applicant submits that there can be no likelihood of confusion because there is no similarity between the goods. In addition, he submits that the earlier mark has at most weak distinctiveness given that the intervener has not claimed that it would have enhanced distinctiveness. EUIPO and the intervener dispute the applicant’s arguments. In the first place, in the light of the argument put forward by the applicant that the distinctiveness of the earlier mark is at most weak, it should be considered, as the Board of Appeal did, that the earlier mark does not have any particular meaning in relation to the goods in Class 3 and, therefore, that it has a normal degree of inherent distinctiveness. Furthermore, and in any event, it should be borne in mind that, according to the case-law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES. COM) , T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited). In the second place, as regards the global assessment of the likelihood of confusion, it is apparent from the foregoing that the signs are identical and the goods are similar to a low degree. The Board of Appeal was therefore correct to conclude that there was a likelihood of confusion as regards the commercial origin of the goods at issue. It will not be easy for the relevant public to believe that the goods covered by the earlier mark and the goods covered by the mark applied for have a different commercial origin, since the signs are identical and all the goods concerned are similar, if only to a low degree, on account, in particular, of their marketing channels and, as the case may be, of their purpose. It follows from all of the foregoing that the action must be dismissed and, consequently, that the intervener’s head of claim seeking the rejection of the application for registration must be rejected. 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, he 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 (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Mr Stefan Makk to pay the costs. Marcoulli Frimodt Nielsen Schwarcz Delivered in open court in Luxembourg on 30 June 2021. 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