Judgment — ECLI:EU:T:2019:415
Date: 2019-06-13
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Netherlands

summary of depilatories bearing the dermépil mark, agreements for packages dated July 2014, an invoice dated July 2015 for the design and production of a logo for the amount of EUR 4 645 and a 2015/2016 catalogue containing many products of the dermépil mark. 67 First, the applicant alleges that only six invoices were produced for the period concerned. 68 However, as is apparent from paragraph 59 above, 38 invoices were submitted, which contain the name of the product associated with the dermépil mark and relate to the relevant period. 69 In this regard, the 38 invoices, addressed to several different persons, which also shows that the mark was used publicly and externally and not only within the company that owns the earlier mark or in a distribution network owned or controlled by it, were issued over a period from 14 January 2009 to 31 October 2011, that is for a period of 33 months, concern several product ranges whose packaging bears the mark concerned and bears numbers that are very widely spaced from each other (40016819 for the invoice of 14 January 2009, 40028073 for that of 28 January 2010, 40040270 for that of 13 January 2011 and 40052512 for that of 31 October 2011), which makes it possible to consider them as having been presented purely for illustration purposes (see, to that effect, judgment of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 87). 70 Since those invoices are illustrative, they cannot represent actual sales figures for the goods bearing the mark. As is apparent from the file submitted to the Board of Appeal, the invoices are numbered in ascending and chronological order (see, to that effect, judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 88). 71 The sales made, even if they are not high volume, constitute use which, objectively, is such as to create or preserve an outlet for the goods in question and entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (judgments of 11 March 2003, Ansul, C‑40/01, EU:T:2003:145, paragraphs 35 and 36, and of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 89). 72 Furthermore, inasmuch as the applicant claims that the invoices relate to ‘dermépil monoï’, ‘dermépil fleur d’oranger’ and ‘dermépil lavande’ and not to the alleged earlier mark dermépil Perron Rigot, it should be stated that it is apparent from the information in the case file lodged with EUIPO that the earlier mark consists of the word element ‘Perron Rigot’ and the word element ‘dermépil’, the latter referring to a range of goods available according to their fragrance or composition. 73 It follows that the invoices undoubtedly relate to the earlier mark, so that the Board of Appeal did not err when it took them into account for the purpose of determining genuine use. 74 Secondly, the applicant claims that the 2010 catalogue does not make it possible to determine the territory to which it applies, as French is also used in Belgium or Senegal. 75 That argument does not stand up to a simple examination of the catalogue that the applicant could clearly carry out, in so far as, on page 2 of the catalogue, there is a reference to a ‘toll-free number’ which can only be reached from France and it is also specified that ‘all prices are exclusive of tax, mainland France’, which clearly demonstrates that this catalogue concerns goods offered for sale only in mainland France. 76 Thirdly, contrary to what the applicant claims, the labels contained in the file, which are faithfully reproduced in a brochure dated 2015/2016, are also to be taken into consideration, in so far as they establish how the mark is affixed and distributed on the market. 77 In this respect, it should be noted that that brochure includes an address and a telephone number in France and also mentions the domain name ‘www.dermepil.fr’. 78 Furthermore, the invoice for EUR 4 645 for the design and production of the trade mark logo is also an element that highlights the nature and extent of use of the earlier mark. 79 In that context, it should be added, in so far as the applicant emphasises the fact that the sales volumes in question were very low, that the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking; nor is it intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraphs 72 and 74, and of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 90). 80 Fourthly, the applicant complains that the Board of Appeal did not, in the contested decision, refer in detail and explicitly to the evidence submitted to it, with the result that the reasoning is laconic. 81 In that regard, it should be noted, on the one hand, that the Board of Appeal, as is apparent from paragraphs 64 and 65 above, listed the evidence it took into consideration and, in paragraphs 25 to 33 of the contested decision, examined the place, duration, extent and nature of use of the mark at issue in the light of some of the evidence provided by the intervener in the administrative procedure, specifying, in particular in paragraphs 25, 26 and 29 of that decision, the documents to which it referred. It follows that this complaint must be rejected. 82 On the other hand, assuming that, by this complaint, the applicant calls into question the reasoning of the contested decision, it should be recalled that, according to settled case-law, the obligation to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the arguments put forward by the parties before them. It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgments of 16 May 2012, Wohlfahrt v OHIM — Ferrero (Kindertraum), T‑580/10, not published, EU:T:2012:240, paragraph 28 and the case-law cited, and of 27 February 2018, Hansen Medical v EUIPO — Covidien (MAGELLAN), T‑222/16, not published, EU:T:2018:99, paragraph 50 and the case-law cited). 83 In that regard, it must be noted that, in paragraphs 25 to 48 of the contested decision, the Board of Appeal gave exhaustive reasons why the intervener had made serious use of the earlier mark, even if the applicant does not share this analysis on the merits. On the other hand, by specifying the reasons why the intervener had made genuine use of the earlier trade mark, the Board of Appeal allowed the applicant, as is apparent moreover from the application, to know the reasons for the contested decision, to criticise it and to challenge the grounds for it before the General Court (see, to that effect, judgments of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 63, and of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 78). 84 It follows that the Board of Appeal was not required to provide further reasons for the contested decision, since the latter enabled the applicant to understand the justifications for the measure taken and enabled the General Court to exercise its review of legality. 85 It follows from all of the foregoing that the second and third pleas in law in the action must be rejected. First plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof 86 In the context of the first plea, the applicant claims, in essence, first, that the analysis of the comparison of the goods in question and of the marks at issue is flawed, so that, contrary to what the Board of Appeal found, there is no likelihood of confusion between those marks. The similarity of the goods in question 87 The applicant contests the similarity found by the Board of Appeal between certain goods covered by the earlier mark and those covered by the contested mark. 88 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 (judgment of 8 March 2018, Claro Sol Cleaning v EUIPO — Solemo (Claro Sol Facility Services desde 1972), T‑159/17, not published, EU:T:2018:123, paragraph 24; see also, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19). 89 Furthermore, it must be borne in mind that, in assessing the similarity between the goods in question, all the relevant factors relating to those goods 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 (see order of 8 May 2014, OHIM v Sanco, C‑411/13 P, not published, EU:C:2014:315, paragraph 39 and the case-law cited). Other factors may also be taken into account such as the distribution channels of the goods concerned (judgment of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 58). 90 Finally, it has previously been held that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or the provision of those services lies with the same undertaking (see judgment of 24 September 2008, Oakley v OHIM — Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 52 and case-law cited; judgment of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 24). 91 In the first place, the applicant claims that ‘toiletries’ cannot be regarded as identical to ‘cosmetics for depilatory purposes’. While the purpose of the former is, it is claimed, to keep the body clean, that of the latter is to remove hair in order to beautify the body. 92 It should be recalled that the Board of Appeal found, in paragraph 53 of the contested decision, that ‘toiletries’, as a broader category, were identical to ‘cosmetics for depilatory purposes’. 93 That finding must be upheld. 94 ‘Toiletries’ are not only products intended for washing, but are, more generally, daily body care or beauty products, which therefore necessarily include cosmetics for depilatory purposes, which are also intended to care for or beautify the body. 95 According to the case-law, goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and case-law cited). 96 In the second place, in the applicant’s view, there is no similarity between ‘cleaning preparations’ and ‘cosmetics for depilatory purposes’ and that conclusion applies also as regards ‘quillaia bark for washing’ and ‘perfumery; amber [perfume]; extracts of flowers [perfumes]; Ionone [perfumery]; bases for flower perfumes; potpourris [fragrances]; mint for perfumery; fumigation preparations [perfumes]; perfumes; musk [perfumery]; eau de cologne; lavender water; toilet water; scented water’. The applicant also criticises, following the corrigenda of 16 August and 6 December 2018, the inclusion of ‘jasmine oil’ in the list of goods whose registration was cancelled. 97 As a preliminary remark, it should be noted that, although, as the applicant points out, ‘potpourris [fragrances]’ and ‘fumigation preparations [perfumes]’ are considered, in paragraph 61 of the contested decision, as being similar to an average degree to goods covered by the earlier mark, it is apparent, however, from paragraphs 62 and 63 of that decision that the Board of Appeal considered them to be different from the goods in dispute. Moreover, it follows from paragraph 2 of the corrigendum of 16 August 2018 that paragraph 61 of the contested decision contains an error in so far as those goods were considered to be similar to the goods covered by that mark, even though they are different. Accordingly, in so far as the ‘potpourris [fragrances]’ and ‘fumigation preparations [perfumes]’ do not appear in paragraph 3 of the operative part of the contested decision, either before or after that corrigendum, so that their registration is maintained, the applicant’s argument has no factual basis. 98 As regards the other goods referred to in paragraph 96 above, consideration must be given, first, to ‘cleaning preparations’ and it must be found that, as correctly stated by the Board of Appeal in paragraph 61 of the contested decision, there is an average degree of similarity between those preparations covered by the contested mark and the ‘cosmetics for depilatory purposes’, in the sense that cleaning preparations are necessarily complementary in the depilation process. In addition, those goods share the same distribution channels and are intended for the same public. 99 As regards, secondly, ‘quillaja bark for washing’ and ‘perfumery; amber [perfume]; extracts of flowers [perfumes]; jasmine oil; ionone [perfumery]; bases for flower perfumes; mint for perfumery; perfume; musk [perfumery]; eau de Cologne; lavender water; toilet waters; scent waters’, the Board of Appeal also did not err in finding, in paragraph 61 of the contested decision, as amended by point 2 of the corrigendum of 16 August 2018, that those goods were similar to an average degree to the contested goods, since they can be applied to the body following hair removal and since they were directed at the same public. In addition, cosmetics for depilation may contain fragrances to substitute the odour emitted by the depilation product itself. 100 In the third place, with regard to ‘essential oils’ which, according to the applicant, are different from ‘cosmetics for depilation purposes’ on the ground that they have a different nature and purpose, it must be noted that ‘essential oils’ are generally and naturally associated with ‘cosmetics for depilation purposes’, in that they are generally applied to the body after depilation, so that they are complementary, and that they target the same public. There is therefore a close link between those goods within the meaning of the case-law referred to in paragraph 90 above. 101 Furthermore, those goods can be sold in the same outlets and are aimed at the same category of consumers. In addition, it is not uncommon for the manufacturers of those goods to be the same (see, to that effect, judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 112). 102 In the fourth place, as regards ‘Denture polishes; Preparations for cleaning dentures’, since ‘Dentifrices’ are no longer included in the list of goods whose registration is cancelled, the applicant himself acknowledges that they fall within the category of ‘cosmetics’. It follows that, as it is included in the same category, there is no doubt, in the light of the case-law referred to in paragraph 95 above, that there is a link between the goods in question. 103 Furthermore, it is necessary to uphold the Board of Appeal’s finding, in paragraph 65 of the contested decision, that the contested goods are used to clean, protect or even whiten teeth, have the same general purpose, namely personal care, target the same public and use the same distribution channels. 104 In the fifth place, as regards ‘alum stones [astringents]’, the Board of Appeal found, in paragraph 66 of the contested decision, that they were applied to the skin, in particular to reduce bleeding from minor abrasions, whether due to shaving or depilation. Furthermore, that stone may also be used to serve as an antiseptic or to ease burns caused by shaving. There is therefore a link between the goods in question, so that that finding of the Board of Appeal must be upheld. 105 In the sixth place, as regards products of the type ‘smoothing and polishing stones, preparations, creams and paper which are applied to the skin and hair’, the Board of Appeal correctly found, in paragraph 67 of the contested decision, that those goods belong to the broad category of personal hygiene and were often used at the same time for daily body care, specifically to soften the skin before or after the depilation process. 106 In the seventh place, as regards ‘grinding preparations; pastes for razor strops’, it must be noted that they serve to maintain or to grind razor strops, so that, even if the level of similarity between the contested goods is low, there is in any event a certain similarity resulting from the fact that the public may think that they have the same commercial origin. It is thus without committing any error that the Board of Appeal found, in paragraph 68 of the contested decision, that there was a low degree of similarity between the goods concerned. 107 In the eighth place, as regards all the other goods at issue which were considered by the Board of Appeal to be similar to some degree to the goods covered by the earlier mark, it must be noted that, although the applicant claims that all the other goods of the mark at issue must be considered to be different from the goods covered by the earlier mark, he merely asserts that lack of similarity, without in any way substantiating his arguments in support of that assertion. 108 In that regard, in so far as the applicant seeks to refer to arguments which, he claims, he put forward in the course of the proceedings before EUIPO, it should be recalled that, according to settled case-law, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents cannot compensate for the lack of essential elements of the legal arguments, which, under Article 76(d) of the Rules of Procedure, must appear in the application itself. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer. It follows that the application, to the extent that it refers to the written submissions to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (see, to that effect, judgment of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 86 and case-law cited; judgment of 8 July 2010, Engelhorn v OHIM — The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 18 and 19; and order of 18 October 2016, Laboratoire de la mer v EUIPO — Boehringer Ingelheim Pharma (RESPIMER), T‑109/16, not published, EU:T:2016:627, paragraph 28). 109 That argument must therefore be rejected. 110 It follows from all of the foregoing that the Board of Appeal did not err in comparing the goods at issue. Similarity of the conflicting trade marks 111 As regards the comparison of the marks at issue, the applicant criticises the reasoning of the Board of Appeal in that, primarily, it was based on an incorrect premiss as regards determining the distinctive and dominant character of those marks. In the applicant’s view, by ignoring the descriptive nature of the word elements ‘dermépil’ and ‘dermæpil’ of the marks at issue and by failing, on the contrary, to emphasise the other distinctive elements in those marks, the Board of Appeal wrongly concluded that there was a similarity between them. 112 Article 53 of Regulation No 207/2009 provides, inter alia: ‘1. [An EU] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; …’ 113 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘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. 114 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 (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 24; see also, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19). 115 Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 25; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 22, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 20). 116 That global assessment 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 The interdependence of those factors is expressly referred to in recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 26 and the case-law cited). 117 Furthermore, the global assessment must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 8(1)(b) of Regulation No 207/2009 ‘… there exists a likelihood of confusion on the part of the public …’ shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 27; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 21). 118 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. 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 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 28 and the case-law cited; see also, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). 119 The Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations. 120 In that regard, the marks to be compared are the following: Earlier mark Contested mark 121 The earlier mark is a French trade mark, with the result that, as is apparent from paragraph 70 of the contested decision, the relevant public is the French public. In view of the nature of the goods concerned, namely cosmetics for depilatory purposes, it must be found that the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect, with the result that the relevant public’s level of attention must be qualified as average (see, to that effect, judgments of 14 April 2011, Lancôme v OHIM — Focus Magazin Verlag (ACNO FOCUS), T‑466/08, EU:T:2011:182, paragraph 49 and the case-law cited, and of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 25). 122 As regards the similarity of the marks at issue, it must be borne in mind that, as has already been stated in paragraph 117 above, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. 123 In particular, 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 at issue 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. 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 (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 33; see also, to that effect, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43). 124 In the present case, it is therefore necessary, before examining whether there is any visual, phonetic and conceptual similarity between the marks at issue, to determine the distinctive and dominant elements of those signs. – The distinctive and dominant elements of the marks at issue 125 According to the case-law, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 36 and the case-law cited). 126 Furthermore, where a trade mark is composed of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name than by describing the figurative element of the mark (judgments of 31 January 2012, LA VICTORIA DE MEXICO, T‑205/10, not published, EU:T:2012:36, paragraph 38, and of 16 January 2014, Message Management v OHIM — Absacker (ABSACKER of Germany), T‑304/12, not published, EU:T:2014:5, paragraph 31). However, this is not the case when the figurative element ranks equally with the central element (see, to that effect, judgment of 24 November 2005, Simonds Farsons Cisk v OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 47). 127 In the first place, with regard to the earlier mark, it must be pointed out that that composite mark consists of two word elements, namely ‘dermépil’ in lower case letters, but in bold and in a very legible font, and ‘perron rigot’ in lower case letters, except for the first letters of each word ‘p’ and ‘r’, in italics and in a font that is difficult to read. Those elements are written in black letters on a light grey square background with the silhouette of a woman depicted in light grey. 128 As was correctly pointed out by the Board of Appeal in paragraph 74 of the contested decision, the silhouette of a woman is not particularly striking for depilation products, especially as the word element ‘dermépil’ is superimposed on that device, for which it has a background function and is purely decorative. The other word element ‘perron rigot’, because of its size, is barely visible. 129 It must therefore be noted that the word element ‘dermépil’ of the mark applied for is such as to give it a distinctive and dominant character (see, to that effect, judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 38 and the case-law cited). 130 In the second place, with regard to the contested mark, it consists of three elements. The first element, which appears in the first position and has an independent role, is a figurative element that resembles the schematic representation of a rose. The second element, which appears in capital letters and in bold and in a very large font, is the word element ‘dermæpil’. The third element, positioned directly below, in block capitals but in a very fine font, is the word element ‘sugar epil system’, which is not immediately legible. 131 In view of its place and significant presence within the composite mark, the figurative element, which appears in first position, is effectively co-dominant with the word element ‘dermæpil’ in the overall impression, as the Board of Appeal rightly found in paragraph 75 of the contested decision. 132 However, that finding must be balanced by the fact that it cannot be disputed that many care or beauty products refer to flowers. Moreover, it must be noted that this figurative element will not be pronounced phonetically, in so far as the average consumer will more readily refer to the goods in question by quoting the name rather than by describing the figurative element of the mark (see, to that effect, judgment of 29 June 2017, Mr. Kebab v EUIPO — Mister Kebap (Mr. KEBAB), T‑448/16, not published, EU:T:2017:459, paragraph 26 and the case-law cited). 133 Furthermore, the word element ‘sugar epil system’, due to the size of its characteristics and its position, is difficult to read. Furthermore, even if the relevant public is the French public, the words ‘sugar’ and ‘system’ because they are basic English words, will certainly be understood by that public, especially since those words are associated with the word ‘epil’, which the French public will perceive as the root of the word ‘épilation’ (depilation) or the verb ‘épiler’ (depilate). 134 It follows that the two marks at issue have in common as a distinctive and dominant element a word element which is virtually identical, the only difference arising, almost in the middle of those marks, from the presence of the letter ‘æ’ in capital letters in the contested mark and the letter ‘é’ in lowercase letters in the earlier mark. 135 The applicant criticises that analysis on the ground that the suffixes ‘derm’ and ‘epil’, comprising the word element ‘dermépil’, should have been considered by the Board of Appeal as being descriptive, with the result that, in accordance with the case-law according to which a descriptive element should be given less importance in the context of the overall impression, to the extent that the target consumer does not generally consider a descriptive element as the distinctive and dominant element in the overall impression, with the result that the element ‘dermépil’ could not be regarded as distinctive and dominant. 136 In this regard, it is common ground that, as the applicant points out, the relevant consumer generally does not consider a descriptive element forming part of a complex trade mark as a distinctive and dominant element (see, to that effect, judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 41, and of 27 February 2015, Spa Monopole v OHIM — Olivar Del Desierto (OLEOSPA), T‑377/12, not published, EU:T:2015:121, paragraph 27). 137 However, there may be special circumstances that justify the dominance of a descriptive element. This is the case, in particular, because of its position in the sign or its size, so that it may make an impression on consumers and be remembered by them, or the fact that the respective word elements occupy a central position in the marks at issue and dominate their overall image (see judgment of 29 June 2017, Mr. KEBAB, T‑448/16, not published, EU:C:2017:459, paragraph 28 and the case-law cited). That is indeed the case here, as is apparent from the analysis of the marks at issue made in paragraphs 128 to 135 above. 138 It follows from the foregoing that the judgment of 21 February 2013, Laboratoire Bioderma v OHIM — Cabinet Continental (BIODERMA) (T‑427/11, not published, EU:T:2013:92), relied on by the applicant, which concerned proceedings for the declaration of invalidity of an EU mark based on an absolute ground for refusal, is not relevant in the context of cancellation proceedings based on a relative ground for refusal. This is necessarily the case with regard to the judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB) (T‑19/04, EU:T:2005:247), also relied on by the applicant, which concerned a registration procedure based on an absolute ground for refusal. 139 It should also be recalled that, in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of a national mark relied on in support of an opposition to the registration of a Community trade mark (judgments of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47, and of 16 January 2014, ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 52). 140 It follows that that sign cannot be found to be generic, descriptive or devoid of any distinctive character, without calling into question the validity of the earlier mark in proceedings for the declaration of invalidity of an EU mark, which would give rise to an infringement of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 51 and 52, and of 16 January 2014, ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 53). 141 It follows that, since the mark has been duly registered in a Member State and no national proceedings for a declaration of invalidity of the earlier trade mark have been brought resulting in its invalidity on the ground of its alleged descriptive character, the earlier trade mark must be regarded as having distinctive character. 142 In those circumstances, it must be acknowledged that the earlier mark, including ‘cosmetics for depilation purposes’ has a minimum degree of distinctiveness. 143 Moreover, it should be recalled that, even if the earlier mark has a weak distinctive character, if the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one element 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 marks and between the goods or services concerned (see judgment of 16 January 2014, ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 55 and the case-law cited). 144 It is therefore in the light of those considerations that it is necessary to examine the visual, phonetic and conceptual comparison of the marks at issue. – Visual comparison of the marks at issue 145 Visually, the Board of Appeal concluded, in paragraph 80 of the contested decision, that the marks at issue were similar to an average degree, due to the presence of the element considered distinctive and dominant, namely ‘dermépil’ in the earlier mark and ‘dermæpil’ in the contested mark, as the other elements do not compensate for the overall impression of visual similarity created by the almost identical element. 146 In that regard, it is clear from settled case-law that the fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. 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 (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 42). 147 Furthermore, it must be borne in mind that the fact that the marks at issue include similar word elements does not, by itself, make it possible to conclude that those marks are visually similar. The presence in the marks of figurative elements that are set out in a specific way can have the effect that the overall impression conveyed by each sign is different (judgments of 24 November 2005, KINJI by SPA, T‑3/04, EU:T:2005:418, paragraph 48; of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 43; and of 7 November 2017, Frame v EUIPO — Bianca-Moden (BiancalunA), T‑628/15, not published, EU:T:2017:781, paragraph 55). 148 However, while, in the present case, the presence of different word and figurative elements in the marks at issue which are juxtaposed with the dominant word element will necessarily be perceived as elements differentiating the two marks, they are not sufficient to compensate for the presence of such an almost identical word element in those marks. Thus, the presence of additional figurative and word elements makes it possible to establish, as the Board of Appeal rightly found in paragraph 80 of the contested decision, that the marks at issue are similar to an average degree. 149 It follows that the Board of Appeal did not err when, with regard to the visual comparison of the trade marks at issue, it found that there was an average degree of similarity between them. – Phonetic comparison of the marks at issue 150 As the Board of Appeal noted in paragraph 83 of the contested decision, the marks at issue are phonetically identical, since only the distinctive and dominant word element of those marks, namely ‘dermépil’ and ‘dermæpil’ respectively, will be pronounced. It must be noted that the relevant consumers will not pronounce the other word elements of those marks, either primarily to economise on words because they take time to pronounce and are easily separable from the dominant element of the marks at issue, or, secondarily, because of a lack of legibility (see, to that effect, judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 48 and the case-law cited). 151 Thus, the pronunciation of the word elements ‘dermépil’ or ‘dermæpil’ is identical, in so far as, in French, the vowels ‘æ’ in the contested mark are pronounced in the same way as the letter ‘é’ in the earlier mark. 152 As regards the figurative elements in the marks at issue, they are in any event of no importance in the context of the phonetic comparison, since only the word elements are pronounced (see, to that effect, judgment of 7 February 2013, AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, not published, EU:T:2013:68, paragraph 39). 153 It follows that the marks at issue are phonetically identical. – Conceptual comparison of the marks at issue 154 The Board of Appeal found, in paragraph 84 of the contested decision, that, conceptually, even though the terms ‘dermépil’ and ‘dermæpil’ shared the notions of ‘derm/a’ and ‘epil’, neither of those terms as a whole had any meaning, so that the conceptual comparison remained neutral. 155 However, as is apparent from paragraph 89 of the contested decision, the marks at issue are conceptually very similar for that part of the French public which perceives the word elements ‘dermépil’ and ‘dermæpil’ as conveying the same meaning. – The existence of a likelihood of confusion 156 It should be noted that, according to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 4(1)(b) of the Directive, according to which ‘... there exists a likelihood of confusion on the part of the public ...’, shows that the perception of the marks by the average consumer of the type of goods or service in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23 et seq.). 157 In the present case, with regard to the degree of similarity of the goods, there is a likelihood of confusion, including with regard to products that are similar to a low degree, in so far as they are phonetically identical, visually similar to an average degree and conceptually highly similar for the part of the French public which perceives the word elements ‘dermépil’ and ‘dermæpil’ as conveying the same meaning and conceptually neutral for the other part of the French public. 158 As was correctly pointed out by the Board of Appeal in paragraph 91 of the contested decision, having regard, first, to the imperfect recollection which the relevant public may have of the marks at issue after the purchase transaction and, secondly, the interdependence of the various factors, there is a likelihood of confusion since the relevant public, despite having a level of attentiveness which is at least average, could be led to believe that the goods in question come from the same undertaking or from economically linked undertakings. 159 It follows that the Board of Appeal rightly found that there was a likelihood of confusion between the marks at issue, so that the first plea in law must be rejected and the action must be dismissed in its entirety. Costs 160 Under Article 134(1) of the Rules of Procedure, 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 (Eighth Chamber), hereby: 1. Dismisses the action; 2. Orders Mr Radoslaw Pielczyk to pay the costs. Collins Barents Passer Delivered in open court in Luxembourg on 13 June 2019. E. Coulon A. M. Collins Registrar President * Language of the case: English.