Information;Judgment — ECLI:EU:T:2025:757
Date: 2025-07-23
Language of the case: English
Court formation: Eighth Chamber
Procedure: Action for annulment - successful

JUDGMENT OF THE GENERAL COURT (Eighth Chamber) 23 July 2025 (*) ( EU trade mark – Opposition proceedings – Application for the EU figurative mark HOMM THE SOUND OF NATURE – Earlier EU word mark HOME OF NATURE – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001 In Case T‑393/24, Robertet, Inc., established in Mount Olive, New Jersey (United States), represented by O. Nilgen and T. Wittmann, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being RB Distribution Srl, established in Bologna (Italy), represented by M. Maccagnani, G. Ciccone and F. Ghini, lawyers, THE GENERAL COURT (Eighth Chamber), composed of A. Kornezov, President, G. De Baere and K. Kecsmár (Rapporteur), Judges, Registrar: V. Di Bucci, having regard to the written part of the procedure, having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court, gives the following Judgment 1 By its action under Article 263 TFEU, the applicant, Robertet, Inc., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 May 2024 (Case R 2046/2023-1) (‘the contested decision’). Background to the dispute 2 On 16 November 2021, the intervener, RB Distribution Srl, filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign: 3 The mark applied for covered goods and services in, inter alia, Classes 3, 4 and 35 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. 4 On 1 March 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above. 5 The opposition was based on the earlier EU word mark HOME OF NATURE, registered on 4 March 2021 under No 14 802 441 and covering goods in Classes 1 and 3. 6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). 7 On 8 August 2023, the Opposition Division upheld the opposition. 8 On 3 October 2023, the intervener filed a notice of appeal with EUIPO against the Opposition Division’s decision. 9 By the contested decision, the Board of Appeal upheld the appeal, annulled the Opposition Division’s decision and rejected the opposition in its entirety, on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in respect of all the goods and services covered by the mark applied for, since the signs at issue were dissimilar. Forms of order sought 10 The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. 11 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs in the event that a hearing is convened. 12 The intervener claims that the Court should: – dismiss the action; – confirm the decision of the Board of Appeal; – order the applicant to pay the costs. Law 13 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. 14 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. 15 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. 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). 16 For the purpose 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). 17 In the present case, the applicant does not dispute that the level of attention of the relevant public is average and that the relevant territory is that of the European Union. 18 According to case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgment of 17 February 2011, Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), T‑358/09, EU:T:2011:49, paragraph 26 and the case-law cited). 19 Moreover, 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 that 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). 20 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 (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). 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). The distinctive and dominant elements of the marks at issue 21 It must be borne in mind that, in order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 27 and the case-law cited). 22 In addition, it must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he or she will identify the elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see judgment of 5 October 2020, NATURANOVE, T‑602/19, not published, EU:T:2020:463, paragraph 28 and the case-law cited). 23 In the present case, the earlier mark is a word mark composed of the three following word elements: ‘home’, ‘of’, ‘nature’. 24 The mark applied for is a composite mark containing word and figurative elements. It consists of the upper-case letter ‘H’ in bold type, followed by a figurative element in the shape of a circle with a dot in its centre, above the group of upper-case letters ‘MM’, also in bold type. All those elements are placed on a white background, the square shape of which is demarcated by a black line. Below that set is the expression, written in a smaller size and in standard upper-case letters, ‘the sound of nature’. 25 The Board of Appeal noted, in paragraph 24 of the contested decision, that the earlier mark HOME OF NATURE was a word sequence that is part of basic English vocabulary. That mark conveys a simple, clear and unambiguous message which would be understood immediately and without further thought by the public throughout the European Union and would be perceived as an advertising message referring to the natural characteristics of the goods in Classes 1 and 3. 26 As regards the mark applied for, the Board of Appeal found, in paragraph 25 of the contested decision, that it consists of word and figurative elements. As regards the element in the upper part of the sign, the Board of Appeal noted that the letters ‘h’, ‘m’, ‘m’ and the figurative element consisting of a circle with a dot in its centre created a unit that would not be divided into its individual elements, and that that unit had no meaning in any of the languages of the European Union, thus constituting the dominant and distinctive element of that mark. As regards the expression ‘the sound of nature’, the Board of Appeal found that it (i) consists of basic English words, (ii) has a meaning easily understood by the relevant public in the European Union and (iii) is perceived as a promotional statement referring to the natural characteristics of the goods and services in Classes 3, 4 and 35. Consequently, that expression is devoid of any distinctive character. The Board of Appeal thus concluded that, on account of its size and its non-distinctive character, that expression played only a secondary role in the overall impression created by the mark applied for. 27 The applicant submits that the Board of Appeal made several errors in the assessment of the distinctive and dominant elements of the marks at issue. The Board of Appeal erred in finding, inter alia, that the beginning of the mark applied for consisted of a figurative element, not a word element, since the consumer would decipher and perceive the mark applied for as a single expression. Furthermore, the applicant submits that the Board of Appeal erred in finding that the element in the upper part of the sign was the dominant and distinctive element of the mark applied for, in that it is highly unlikely, if not impossible, that the consumer would refer to the mark applied for by describing that element. 28 EUIPO is of the view that it remains unclear whether a word may be identified unambiguously within the figurative element of the mark applied for. Therefore, it submits that the question whether a part of the relevant public with poor English skills would notice a misspelled version of the word ‘home’ was not relevant. 29 The intervener supports, in essence, EUIPO’s arguments. 30 First of all, as regards the distinctive and dominant elements of the mark applied for, it must be held, in the present case and as the Board of Appeal found, that, on account of its small size and its non-distinctive character, the expression ‘the sound of nature’, which appears in the lower part of the mark applied for, played only a secondary role in the overall impression created by that mark. 31 By contrast, as regards the element in the upper part of the mark applied for, it is appropriate to find that the Board of Appeal erred in failing to find that the circle with a dot in its centre could be perceived by the relevant public as the stylised letter ‘o’. It is true that the latter differs from the usual representation of the letter ‘o’, in that a dot appears in its centre. However, it must be stated that that circle is in such a position that the relevant public will perceive it as corresponding to the letter ‘o’, forming part of a single whole with the three other letters ‘h’, ‘m’ and ‘m’. 32 Indeed, first, the spacing between the four elements forming the upper element of the mark applied for appears homogeneous; second, the fact that the letter ‘h’ and the circle with a dot in its centre are on a line and the group of letters ‘mm’ are on a line below it has no impact on the overall impression created by the mark, because a word element is immediately identifiable; third, the fact that the letters ‘h’, ‘m’ and ‘m’ are represented in the same font further reinforces the cohesion between those letters and that circle. In those circumstances, the Court finds that the relevant public will perceive that circle as forming part of the letters ‘h’, ‘m’ and ‘m’ and subsequently also as a letter, namely the letter ‘o’. 33 It follows that, contrary to the Board of Appeal’s findings, the relevant public will recognise the word element ‘homm’ in the upper part of the mark applied for, while noting the arrangement of the group of stylised upper-case letters ‘HO’ in bold type on the upper line with the particular stylisation of the letter ‘o’ (dot in its centre), the group of upper-case letters ‘MM’ in bold type on the lower line and the arrangement of all those elements on a white background, the square shape of which is demarcated by a black line separating them from the lower word element (see, by analogy, judgment of 9 February 2017, zero v EUIPO – Hemming (ZIRO), T‑106/16, not published, EU:T:2017:67, paragraphs 29 to 32). 34 Consequently, although the Board of Appeal assessed the secondary element correctly and identified correctly the element in the upper part of the mark applied for as the dominant element of that mark, it made an error of assessment when it found that the circle with a dot in its centre could not be understood as the stylised letter ‘o’ and would not be pronounced, and thereby failed to take account of the fact that the relevant public would perceive the word element ‘homm’ in the dominant element. Visual comparison 35 The Board of Appeal found, in paragraph 26 of the contested decision, that the marks at issue were visually different, on the ground that the element in the upper part of the mark applied for was the dominant element of that mark, that it had nothing in common with the earlier mark and that it therefore constituted the differentiating factor between the marks at issue. Thus, the fact that the marks at issue shared certain letters was irrelevant given their differences in arrangement and composition. The word elements ‘of’ and ‘nature’ common to the marks were of secondary importance and were less noticeable on account of their weak distinctive character and their position and size, even though those elements were not negligible in the mark applied for. 36 The applicant submits that the marks at issue have an average degree of visual similarity, given that, even if the meaning of the expression ‘the sound of nature’ is easily understood by the relevant public throughout the European Union, it is perceived as a single sentence with ‘homm’ as a single word and therefore, as a whole, consists of more than a promotional statement. Thus, the Board of Appeal erred in finding that the initial part of the mark applied for was the figurative element and that its frame would be considered to be striking. Furthermore, the applicant claims that the term ‘homm’ does not differ clearly in its structure from the word ‘home’, since the first three letters are identical and those elements differ only in their last letter. In so doing, the signs at issue coincide visually in the sequence of letters ‘h’, ‘o’, ‘m’ and in the word elements ‘of’ and ‘nature’. 37 EUIPO and the intervener submit that it is apparent from the particular structure and configuration of the figurative elements that the mark applied for will not be perceived as being composed of a single sentence. Furthermore, according to EUIPO, it is apparent from paragraph 25 of the contested decision that, on account of its size and weak distinctive character, the expression ‘the sound of nature’ plays only a secondary role in the overall impression created by the mark applied for. Last, EUIPO submits that the applicant does not provide any sufficiently developed argument capable of calling into question the Board of Appeal’s finding that the expression ‘the sound of nature’ has weak distinctive character because it alludes to the natural origin of the goods and services. 38 First, it must be observed that the marks at issue share the same sequence of initial letters ‘h’, ‘o’, ‘m’ and the same final expression ‘of nature’. The mark applied for differs in the addition of the expression ‘the sound’, which is not present in the earlier mark, and in the presence of the final letter ‘m’ in the element appearing in the upper part of that mark instead of the final letter ‘e’ in the first word of the earlier mark. 39 Second, the marks at issue also differ in the graphic representation of the mark applied for in that its dominant element ‘homm’ is large, framed, arranged on two lines and written in a slightly stylised upper-case font for the letters ‘h’, ‘m’ and ‘m’ and with a particular stylisation for the letter ‘o’ (dot in its centre). However, that graphic representation is purely decorative. Since the word element ‘homm’ is immediately identifiable, its vertical or horizontal position has no significant impact on the overall impression created by the mark applied for (see, by analogy, judgment of 23 October 2024, Vinatis v EUIPO – Global Rambla Restauración (VINATIS), T‑605/23, not published, EU:T:2024:717, paragraph 91). 40 Consequently, the marks at issue may be perceived as beginning with the letters ‘h’, ‘o’, ‘m’. In addition, the marks at issue coincide in the expression ‘of nature’, which, although secondary in the overall impression created by the mark applied for, does not go completely unnoticed. 41 Therefore, it must be concluded that the marks at issue have a low degree of visual similarity. The fact that consumers retain an image of the signs which is only imperfect (see, to that effect, judgments of 20 December 2023, Pierre Balmain v EUIPO – Story Time (Representation of a lion’s head encircled by rings forming a chain), T‑564/22, not published, EU:T:2023:851, paragraph 57, and of 12 June 2024, Marcinkowska-Dec v EUIPO – Ismailova (DESSI), T‑472/23, not published, EU:T:2024:374, paragraphs 39 and 40) supports the finding of visual similarity between the signs at issue. Phonetic comparison 42 The Board of Appeal found, in paragraph 28 of the contested decision, that the mark applied for would be pronounced in several syllables, which were different from the pronunciation of the earlier mark comprising four syllables, none of which was identical in its pronunciation to that of the individual letters ‘h’ and ‘m’ of the mark applied for. It was also of the view that it was certain that the element in the upper part of the mark applied for would not be pronounced ‘hōm’ – as in the English word ‘home’ – or ‘hom’. Furthermore, the secondary expression ‘the sound of nature’ would be unlikely to be pronounced, given that consumers tend to abbreviate signs. 43 The applicant submits that the Board of Appeal erred in finding that the way in which the mark applied for would be pronounced was not entirely clear. The element in the upper part is pronounced in the same way as the word ‘home’ and the secondary expression ‘the sound of nature’ is also pronounced. According to the applicant, even though consumers may tend to abbreviate long marks, the Board of Appeal erred in finding that the mark applied for would simply be pronounced ‘h’ and ‘m’ without the letter ‘o’. Therefore, consumers will easily recognise the word element ‘homm’, which bears a very strong resemblance to the English word ‘home’, with sounds that are pronounced in a very similar way. 44 EUIPO and the intervener submit that the Board of Appeal’s assessment is not vitiated by any error. The intervener further submits that the presence or absence of the word ‘sound’, beginning with the sibilant consonant ‘s’, makes the signs dissimilar or similar to the lowest degree. 45 It should be noted, as the Board of Appeal did, that, phonetically, the secondary expression ‘the sound of nature’ will not be pronounced, having regard, first, to the natural tendency of consumers to abbreviate long signs (see judgment of 4 May 2016, Bodegas Williams & Humbert v EUIPO – Central Hisumer (BOTANIC WILLIAMS & HUMBERT LONDON DRY GIN), T‑193/15, not published, EU:T:2016:266, paragraph 60 and the case-law cited) and, second, to its smaller size and secondary position in the sign. 46 However, the Court finds that the Board of Appeal made an error of assessment in finding that the element in the upper part of the mark applied for would ‘certainly’ not be pronounced as ‘hōm’ – as in the English word ‘home’ – or ‘hom’ and that the relevant public would spell out the various letters of that element either by pronouncing the letter ‘m’ twice or by pronouncing a ‘double m’. Consequently, according to the Board of Appeal, the mark applied for is pronounced in several syllables, which are different from the sound of the earlier mark consisting of four syllables, none of which is identical in its pronunciation to that of the individual letters ‘h’ and ‘m’ of the mark applied for. 47 The beginning of the mark applied for would be perceived, as is apparent from paragraph 31 above, as consisting of the letters ‘h’, ‘o’, ‘m’ and ‘m’, which will be pronounced together as ‘hōm’ or ‘hom’ and therefore in a very similar way to the pronunciation of the first word, ‘home’, of the earlier mark. 48 Therefore, and in the light of the foregoing, it must be held that, contrary to the Board of Appeal’s finding in paragraph 28 of the contested decision, the marks at issue are phonetically similar to an average degree. Conceptual comparison 49 The Board of Appeal concluded, in paragraph 29 of the contested decision, that the marks at issue could not be compared conceptually. First, the earlier mark formed an independent conceptual unit and had no clear meaning, since ‘nature’ does not have a ‘home’ and nature is everywhere. Secondly, the mark applied for, which was dominated by the element in its upper part, had no clear meaning. 50 The applicant does not dispute the Board of Appeal’s finding that the earlier mark, which constitutes an independent conceptual unit, has no clear meaning. Nevertheless, according to the applicant, that conclusion contradicts the finding in paragraph 24 of the contested decision. The Board of Appeal erred in finding that the marks at issue could not be compared conceptually, even though those marks convey a similar concept and have at least a below-average degree of conceptual similarity for the part of the public which perceives the concept of ‘home’ in the earlier mark and the concept of ‘of nature’ in both marks. Therefore, for the part of the public which associates ‘homm’ with the concept of ‘home’, although the word element ‘sound’ has no meaning for it, the marks at issue have an above-average degree of conceptual similarity. 51 EUIPO and the intervener dispute the applicant’s arguments. EUIPO contends that, in finding that a conceptual comparison was not possible, the Board of Appeal had adopted a position favourable to the applicant. Similarly, on account of the structure of the figurative elements of the mark applied for, that mark will not be perceived as referring to the concept of ‘home’. Lastly, the mere fact that the marks have the words ‘of nature’ in common is of little relevance on account of the descriptive and non-distinctive character of those elements. 52 It must be stated, as the applicant submits, that the marks at issue refer, at the very least, to a similar concept linked to ‘nature’, given that they share that word, which is part of basic English vocabulary, with the result that it will be understood by a significant part of the relevant public, which, moreover, the parties do not dispute. 53 Consequently, it must be held that, contrary to what the Board of Appeal found in paragraph 29 of the contested decision, the marks at issue are conceptually similar to a low degree. 54 It follows from all the foregoing considerations that the Board of Appeal erred in finding that the signs at issue were dissimilar and, consequently, that there could be no likelihood of confusion, thereby failing to carry out a global assessment of the likelihood of confusion. 55 Accordingly, the single plea in law raised by the applicant must be upheld and, consequently, the contested decision must be annulled. Costs 56 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. 57 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. 58 Furthermore, pursuant to Article 138(3) of the Rules of Procedure, the intervener is to bear its own costs (judgment of 4 September 2024, Bela Vizago Nature v EUIPO – Bidah (bidah chaumel ingredientes naturales), T‑452/23, not published, EU:T:2024:581, paragraph 77). On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 May 2024 (Case R 2046/2023-1); 2. Orders EUIPO to bear its own costs and to pay those incurred by Robertet, Inc.; 3. Orders RB Distribution Srl to bear its own costs. Kornezov De Baere Kecsmár Delivered in open court in Luxembourg on 23 July 2025. V. Di Bucci L. Truchot Registrar President * Language of the case: English.