JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
10 December 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark VAL --- ACRYL – Earlier EU word mark Malacryl – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑518/24,
Cin Valentine, SA, established in Montcada I Reixac (Spain), represented by T. Villate Consonni, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
DAW SE, established in Ober-Ramstadt (Germany), represented by J. Voegeli-Wenzl and S. Krämer, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of I. Gâlea, President, B. Ricziová (Rapporteur) and L. Spangsberg Grønfeldt, 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, Cin Valentine, SA, seeks the annulment and alteration of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 August 2024 (Case R 384/2024-1) (‘the contested decision’).
Background to the dispute
2        On 24 September 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign VAL --- ACRYL.
3        The mark applied for covered goods in Class 2 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, corresponding to the following description: ‘Paints and washes; electrodeposition paints; anti-fouling paints; architectural paints; paint preparations; primers; anti-graffiti coatings [paints]; paints for protection against corrosion; phosphorescent paints’.
4        On 6 February 2023, the intervener, DAW SE, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the earlier EU word mark No 2 672 251, Malacryl, filed on 29 April 2002 and registered on 19 June 2003 and duly renewed, covering inter alia the goods in Class 2 and corresponding to the following description: ‘Paints, varnishes, lacquers, glazes, preservatives against rust, primers, colorants, mordants, natural resins, fillers; thinning and binding preparations for paints and lacquers; preservatives; bactericidal/fungicidal paints; metals in foil and powder form for painters, decorators, printers and artists’.
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 20 December 2023, the Opposition Division rejected the opposition in its entirety.
8        On 15 February 2024, 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 on the ground that there was a likelihood of confusion.
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        grant the application for registration of the mark applied for.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
12      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The applicant’s second head of claim
13      As regards the applicant’s second head of claim, it should be noted that that head of claim requests that the Court grant the application for registration and may be understood as asking the Court to alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001 by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not, however, adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited). It follows that the second head of claim must be rejected on the grounds of lack of jurisdiction.
Substance
14      The applicant relies on a single plea in law, arguing, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation 2017/1001 by making an erroneous assessment, first, of the comparison of the signs at issue and, secondly, of the likelihood of confusion.
15      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.
16      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).
17      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).
18      It is in the light of those considerations that it must be examined whether the Board of Appeal correctly found that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The relevant public
19      The Board of Appeal found that the goods at issue targeted both the general public, whose level of attention was average, and professionals, who demonstrated an enhanced level of attention. In that regard, it stressed that, where the relevant public consisted of both end consumers and professionals, the part of the public with the lowest level of attention had to be taken into consideration. Furthermore, the relevant territory is that of the European Union. The Board of Appeal based its assessment on the English-speaking part of the relevant public, which includes consumers in Ireland and Malta, but also consumers in other Member States where English is understood.
20      Those findings are not disputed by the applicant.
The comparison of the goods
21      The Board of Appeal found that the goods at issue were identical, noting that that finding was explicitly confirmed by the parties.
22      Those findings are not disputed by the applicant.
The comparison of the signs
23      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).
24      In the present case, before addressing the question of the visual, phonetic and conceptual comparison of the signs at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those signs carried out by the Board of Appeal.
–       The distinctive and dominant elements of the signs at issue
25      In the present case, the Board of Appeal found that the mark applied for consisted of the string of letters ‘val’ followed by three hyphens and the element ‘acryl’ and that the earlier mark was protected in respect of the word sign Malacryl. In that regard, first, it found that neither the element ‘val’ of the mark applied for nor the element ‘mal’ of the earlier mark had a meaning for the relevant English-speaking public. Thus, both those elements would be perceived as distinctive. Secondly, the Board of Appeal stated that the three hyphens of the mark applied for were non-distinctive since they would be perceived as mere punctuation marks used to separate the elements ‘val’ and ‘acryl’. Thirdly, it found that the common element ‘acryl’ of the signs at issue would be understood as a reference to the English word ‘acrylic’, meaning ‘of or made from a type of acid or a resin which is used in making plastic, cloth, and paint’. According to the Board of Appeal, all the goods at issue could be acrylic or contain acrylic components. Consequently, the Board of Appeal found that the element ‘acryl’ in the two marks at issue was highly allusive of the nature or components of the goods at issue and was of ‘very limited distinctiveness’. Fourthly, the Board of Appeal did not identify any dominant element in the signs at issue.
26      In that regard, the applicant argues that the elements ‘val’ and ‘mal’ constitute the distinctive elements of the signs at issue and that both the Opposition Division and the Board of Appeal recognised that the element ‘acryl’ was purely descriptive of the nature of the components of the goods at issue. Furthermore, according to the applicant, the inclusion of three hyphens and spaces in the mark applied for reinforces the separation between the element ‘val’ and the element ‘acryl’. That inclusion does not act as a mere punctuation mark and is not common; it is original and gives the mark as a whole a totally original and creative image. The three hyphens are therefore distinctive and reinforce the dominant character of the element ‘val’ in the mark applied for.
27      EUIPO and the intervener dispute the applicant’s arguments.
28      In the first place, it should be noted that the applicant approves the Board of Appeal’s assessment of the distinctive character of the elements ‘val’, appearing in the mark applied for, and ‘mal’, appearing in the earlier mark.
29      In the second place, it must be borne in mind that a sign is descriptive if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (see judgment of 6 March 2024, Drinks Prod v EUIPO – Coolike-Regnery (VIVIASEPT), T‑796/22, not published, EU:T:2024:153, paragraph 44 and the case-law cited).
30      As regards the ‘acryl’ element, which is common to the signs at issue, it must, first of all, be noted that the applicant’s claim that the Board of Appeal confirmed that the ‘acryl’ element was purely descriptive of the nature of the components of the goods at issue is based on an incorrect reading of the contested decision, since the Board of Appeal found that that element had very limited distinctiveness. Next, it should be recalled that the relevant public taken into account is the English-speaking public. The term ‘acryl’, however, does not fully reproduce the descriptive English term ‘acrylic’. Nevertheless, since all the goods at issue may be acrylic or contain acrylic components, it must be held that the Board of Appeal did not err in finding that the element ‘acryl’ was highly allusive of the nature or components of the goods at issue and, therefore, had very limited distinctiveness, that is to say, very weak distinctiveness. Although the applicant relies in that regard on the existence of a very large number of trade mark registrations containing the element ‘acryl’ and covering goods in Class 2, those registrations are not relevant, since, in themselves, they do not necessarily reflect the situation in the market and do not enable to establish the perception of the element ‘acryl’ by the relevant public (see, to that effect, judgment of 15 January 2025, Enedo v EUIPO – Enedis (ENEDO), T‑1142/23, not published, EU:T:2025:11, paragraphs 59 and 60 and the case-law cited).
31      In the third place, with regard to the three hyphens in the mark applied for, the applicant’s arguments are not such as to call into question the Board of Appeal’s finding that those hyphens lack distinctive character, since they will be perceived as mere punctuation marks used to separate the elements ‘val’ and ‘acryl’. The applicant does not dispute the Board of Appeal’s finding that the mark applied for consists of the string of letters ‘val’ followed by three hyphens and the word ‘acryl’ and itself emphasises that the inclusion of those three hyphens and spaces in the mark applied for reinforces the separation between the element ‘val’ and the element ‘acryl’. Furthermore, the presence of three hyphens is not in itself capable of making the element ‘val’ dominant in the mark applied for.
32      Accordingly, it must be concluded that the Board of Appeal did not err in its assessment of the distinctive and dominant character of the elements of the marks at issue.
–       Visual similarity
33      The Board of Appeal found that the signs at issue were visually similar to an average degree. In that regard, that finding was based on several elements. First, the signs coincide in sharing the string of letters ‘alacryl’, that is to say, seven out of eight letters, they have an identical length, their endings are identical and their beginnings also have important similarities. Secondly, although the element ‘acryl’ only has weak distinctiveness, it cannot be completely ignored by the relevant public. Furthermore, since the beginnings of the signs at issue have no meaning in English, English-speaking consumers would have no reason to shorten those signs to the elements ‘val’ and ‘mal’. Thirdly, while the separation between the elements of the mark applied for created by the hyphens did not go unnoticed, those hyphens have only a limited visual impact. Lastly, according to the Board of Appeal, the differences resulting, first, from the first letters ‘v’ and ‘m’ and, second, from the presence of three hyphens in the mark applied for, are not sufficient to outweigh the identity of the remaining letters ‘alacryl’.
34      The applicant argues that the signs at issue are visually different and that the Board of Appeal erred in stating that they were similar because of the presence in each of them of the string of letters ‘alacryl’. Since the element ‘acryl’, which represents five of the seven letters composing that string, is descriptive, such importance cannot be accorded to it in the context of the comparison of the marks at issue.
35      In that regard, the applicant argues that, when a common element has a low degree of distinctiveness or is not distinctive, the assessment of the likelihood of confusion must focus on the impact of the non-coinciding components on the overall impression produced by the signs at issue. Therefore, the comparison of those signs should be drawn between their distinctive elements, namely ‘mal’ and ‘val ---’, regard being had to the fact that they only coincide in relation to two out of three letters, the difference between them being their beginnings, and it being important to take into account that, in such short fragments, any difference is highly significant for comparison purposes. Furthermore, the applicant relies on the case-law of the General Court according to which the weak distinctiveness of the common element, in relation to the goods and services in question, considerably reduces the similarity between the marks.
36      The applicant also stresses that the differences lie at the beginning of the signs at issue and refers to the fact that it is the very beginning of the mark which attracts the consumer’s attention and will be more easily retained by the consumer when identifying the product and its corporate origin. According to the applicant, this is particularly true in the present case, given that the remainder of those signs consists of a descriptive element of the goods at issue.
37      Furthermore, the applicant argues that the three hyphens and the spaces between the word elements ‘val’ and ‘acryl’ serve to reinforce the separation between those elements. According to the applicant, those hyphens not only reinforce the structural difference, namely one word in the earlier mark, as opposed to two words in the mark applied for, but also give a completely different visual image which is original and creative.
38      EUIPO and the intervener dispute the applicant’s arguments.
39      In the present case, the word marks at issue consist of eight letters, seven of which are common to both marks and are written in the same order, namely ‘a’, ‘l’, ‘a’, ‘c’, ‘r’, ‘y’ and ‘l’. They differ in their first letter, since the earlier mark contains the letter ‘m’ and the mark applied for contains the letter ‘v’. In addition, they differ by the three hyphens that are placed between the elements ‘val’ and ‘acryl’ in the mark applied for.
40      In the first place, as regards the common element ‘acryl’, it should be noted that it has already been found in paragraph 30 above that that element had very limited distinctiveness, that is to say, very weak distinctiveness.
41      Furthermore, according to the case-law, first, there is no basis for the proposition that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a mark to the point of remembering only the first part (judgment of 18 December 2008, Torres v OHIM – Bodegas Peñalba López (Torre Albéniz), T‑287/06, EU:T:2008:602, paragraph 56). Secondly, the weakly distinctive character of an element which is common to two signs reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account (see judgment of 13 September 2023, Korres v EUIPO – Naos (EST. KORRES 1996 HYDRA-BIOME), T‑328/22, not published, EU:T:2023:533, paragraph 75 and the case-law cited).
42      In those circumstances, the Board of Appeal correctly found that, despite its weak distinctiveness, the element ‘acryl’ would not be ignored in the overall impression produced by the signs at issue.
43      Furthermore, the fact that the element ‘acryl’ is taken into account in the visual comparison of the signs at issue, even if its importance in that comparison is considerably reduced, means that all of the applicant’s arguments based on the brevity of the elements ‘val’ and ‘mal’ must be rejected, since those arguments are based on the incorrect premiss that the comparison of the marks at issue must be based solely on those two elements.
44      In the second place, as regards the elements ‘mal’ and ‘val’, which, being more distinctive, therefore play a more important role in the visual comparison of the marks at issue, those elements share two of the three letters they are composed of, namely ‘a’ and ‘l’, placed in the same order. Those elements differ only in their first letter, respectively ‘m’ for the earlier mark and ‘v’ for the mark applied for.
45      As for the common element ‘acryl’, it provides an additional element of similarity in the visual comparison of the signs at issue.
46      With regard to the reference, in the contested decision, to the string of letters ‘alacryl’, common to the marks at issue, it should be pointed out that, according to settled case-law, what matters in the assessment of the visual similarity between word marks is the presence, in each of them, of several letters in the same order. Consequently, the presence in each of the word marks of several letters in the same order may be of some importance in the assessment of the visual similarities between those signs (see judgments of 30 January 2019, Bekat v EUIPO – Borbet (ARBET), T‑79/18, not published, EU:T:2019:39, paragraph 29 and the case-law cited, and of 8 September 2021, Cara Therapeutics v EUIPO – Gebro Holding (KORSUVA), T‑584/20, not published, EU:T:2021:541, paragraph 27 and the case-law cited). Therefore, the Board of Appeal cannot be criticised for having taken into account the coincidence, in the two signs at issue, of the string of letters ‘alacryl’ in the context of the visual comparison.
47      In the third place, as regards the impact of the hyphens on the visual impression, the Board of Appeal correctly found that, while the separation between the elements ‘val’ and ‘acryl’ created by the three hyphens would not go unnoticed, those hyphens have only a limited impact on the visual impression produced by the mark applied for, given their lack of distinctiveness, as noted in paragraph 31 above, and similarities between other elements of the marks at issue. While those hyphens serve to separate the elements ‘val’ and ‘acryl’, they do not significantly reinforce the structural difference between the signs at issue. The relevant public can also, in its perception of the two marks, divide the earlier mark in the same way into two elements, ‘mal’ and ‘acryl’, because the element ‘acryl’ has a strongly allusive character, in that it evokes the nature or components of the goods at issue.
48      It follows that, visually, the similarities between the signs at issue outweigh the differences between them and that the applicant has not succeeded in challenging the Board of Appeal’s finding that the marks at issue have an average degree of similarity in this respect.
49      Accordingly, the applicant’s arguments concerning the visual comparison of the signs at issue must be rejected.
–       Phonetic similarity
50      The Board of Appeal found that the marks at issue were phonetically similar to a high degree. According to the Board of Appeal, the pronunciation of the signs differs only in their first letter, namely ‘v’ and ‘m’. First, the three hyphens in the mark applied for are not pronounced and have no impact on the phonetic comparison. Secondly, the string of letters ‘alacryl’ is pronounced identically in both signs.
51      The applicant argues that the phonetic structure of the signs at issue is completely different. It argues that, due to the separation created by the three hyphens, the mark applied for will never be pronounced ‘va’ ‘la’ ‘cryl’, but ‘val’ ‘acryl’, unlike the earlier mark, which will be pronounced ‘ma’ ‘la’ ‘cryl’. First, the applicant refers to its company name and the fact that it owns other EU trade marks with the same verbal and phonetic structure, namely VAL --- RUST and VAL -- THANE, consisting of a combination of the element ‘val’ and a descriptive element of the type of product protected. Secondly, the applicant maintains that it is the proprietor of numerous national trade marks that share the same structure, ‘val’ plus a descriptive element, which makes them a family of marks. It is therefore the element ‘val’ and no other element which discharges the function of a trade mark of distinguishing the product in question from other competing products. The element ‘acryl’ should not be given such importance in the phonetic comparison as well. Furthermore, the applicant argues that, since the pronunciation of the letters ‘m’ and ‘v’ is so different, particularly in English, they cannot be confused.
52      EUIPO and the intervener dispute the applicant’s arguments.
53      In the first place, first, assuming that the applicant’s argument, based on its company name and the registration of the EU and national trade marks of which it is the proprietor, seeks to assert that the phonetic comparison should be made by taking into account only the distinctive elements ‘val’ and ‘mal’, it should be recalled that it has already been found that the element common to the marks at issue, namely ‘acryl’, had very limited distinctiveness, that is to say, very weak distinctiveness. Furthermore, the marks at issue will be pronounced in their entirety. Therefore, the element ‘acryl’ must be taken into account in the context of the phonetic comparison.
54      Secondly, with regard to the applicant’s argument based on the existence of a family of national trade marks, it should be recalled that the EU trade mark regime is autonomous and the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO, or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited). Therefore, the national registrations relied on by the applicant are not capable of calling into question the legality of the Board of Appeal’s assessments.
55      In the second place, it should be noted that the marks at issue have, phonetically, despite the three hyphens that appear in the mark applied for, an identical syllabic structure, composed of three syllables, namely ‘mal’ ‘a’ ‘cryl’, for the earlier mark, and ‘val’ ‘a’ ‘cryl’, for the mark applied for. They have an identical sequence of vowels ‘a’, ‘a’ and ‘y’, and coincide in the pronunciation of seven out of eight common letters, namely ‘a’, ‘l’, ‘a’ ‘c’, ‘r’, ‘y’ and ‘l’. The signs at issue have almost identical sounds, differing only in the pronunciation of their first letters, ‘v’ and ‘m’ respectively. Furthermore, it should be noted, as observed by the intervener, that the letters ‘v’ and ‘m’ are not pronounced in isolation. Indeed, the signs at issue begin with the syllables ‘val’ and ‘mal’, which are phonetically similar because they share the same structure, consisting of the succession of a consonant, a vowel and a consonant, the same vowel, ‘a’, and the same final consonant, ‘l’. Their first consonants, although different, are both voiced and labial, meaning they are produced in a similar place of articulation and with the vibration of the vocal cords.
56      It follows that the Board of Appeal correctly found that the marks at issue were phonetically similar to a high degree.
57      Consequently, the applicant’s arguments concerning the phonetic comparison of the signs at issue must be rejected.
–       Conceptual similarity
58      The Board of Appeal found that the signs at issue were conceptually similar to a low degree. First, neither the mark applied for nor the earlier mark, taken as a whole, has a meaning for the relevant English-speaking public. Secondly, the coincidence relating to the concept of ‘acrylic’ exerts only a limited influence in the comparison, in so far as the common element ‘acryl’ is highly allusive to the nature of the goods at issue.
59      The applicant stresses that there are obvious conceptual differences between ‘mal’ and ‘val’, for countries in which the element ‘mal’ is understood as something bad or harmful.
60      EUIPO disputes the applicant’s arguments.
61      It should be noted, as observed by EUIPO, that the applicant has not developed its argument in any way with regard to the relevant English-speaking public taken into account by the Board of Appeal. Consequently, the applicant’s argument concerning the conceptual comparison must be rejected.
The distinctive character of the earlier mark
62      According to the Board of Appeal, the earlier mark as a whole does not convey any meaning in relation to the goods covered by that mark from the point of view of the relevant English-speaking public taken into account, and the intervener did not argue that the earlier mark had acquired enhanced distinctiveness. Consequently, the Board of Appeal found that the inherent distinctiveness of the earlier mark was to be regarded as normal.
63      That finding is not disputed by the applicant.
The likelihood of confusion
64      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).
65      The Board of Appeal found that, taking into account the average visual similarity, high phonetic similarity and low conceptual similarity of the signs at issue, the normal degree of distinctiveness of the earlier mark and the identity of the products at issue, there was a likelihood of confusion, even for the part of the relevant public who will display a higher level of attention. Irrespective of the weak distinctiveness of the common element ‘acryl’, consumers would perceive the marks as a whole and would not completely ignore that element in the overall impression. Furthermore, according to the Board of Appeal, the differences created by the first letters ‘v’ and ‘m’ and by the three hyphens of the mark applied for are not sufficient to reliably distinguish the marks at issue when they are placed on identical products.
66      The applicant disputes the existence of a likelihood of confusion. In the first place, it argues that the presence of a weakly distinctive common element cannot, in principle, be sufficient to establish a likelihood of confusion. In particular, it maintains that there is no reason to attribute to the coincidence of the element ‘acryl’ such importance that it offsets the differences between the distinctive elements of the marks at issue. In addition, according to the applicant, the respective distinctive elements, namely ‘val’ in the mark applied for and ‘mal’ in the earlier mark, do not coincide and present sufficient verbal and phonetic differences to avoid any likelihood of confusion. Consequently, the applicant argues that no likelihood of confusion can be established, since the coincidence between the signs at issue relates to descriptive elements, while the beginnings of those signs differ, and their visual and phonetic structure is different, due to the separation made by the three hyphens in the mark applied for.
67      In the second place, first, the applicant argues that the TMVIEW portal lists, in the European Union, 264 trade marks registered in respect of products in Class 2 and containing the element ‘acryl’. It infers from that that many marks containing that element coexist on the market, basing itself on the practice of EUIPO. Secondly, it argues that, if an undertaking freely chooses a mark with a weakly distinctive character, including marks whose elements are descriptive and not distinctive, it must, in return, accept that its competitors may also use marks whose descriptive elements are similar or identical. According to the applicant, the intervener’s appropriation of the element placed at the end of the sign ‘acryl’ should not be allowed.
68      EUIPO and the intervener dispute the applicant’s arguments.
69      It follows from the case-law that, where the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited).
70      Likewise, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive or descriptive with regard to the goods or services at issue, the global assessment of the likelihood of confusion will admittedly not often lead to a finding that that likelihood exists. However, it follows from the Court’s case-law that a finding that a likelihood of confusion exists cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55 and the case-law cited).
71      In the present case, it is common ground that the goods at issue are identical and that the intrinsic distinctive character of the earlier mark is average. Furthermore, it has already been found, in paragraphs 33 to 61 above, that the marks at issue had an average degree of visual similarity, a high degree of phonetic similarity, and a low degree of conceptual similarity.
72      Admittedly, the marks at issue, coinciding in the string of letters ‘alacryl’, contain the element ‘acryl’, which has very limited distinctiveness, that is to say, very weak distinctiveness. However, it cannot be asserted, in the light of all the relevant factors in the present case, that the weak distinctiveness of that element would eliminate a likelihood of confusion, due to the striking similarities between the marks. Thus, it must be found, as the Board of Appeal did, that the visual and/or phonetic differences, namely the first letters ‘v’ and ‘m’ and the three hyphens in the mark applied for, do not allow the relevant public to clearly distinguish the marks at issue and therefore cannot exclude any likelihood of confusion.
73      As regards the coexistence of numerous registered trade marks containing the same element, namely ‘acryl’, it has already been established in paragraph 30 above, in the context of assessing the distinctive and dominant elements of the marks at issue, that those registrations are not relevant, since, in themselves, they do not necessarily reflect the situation in the market.
74      In that regard, it should also be borne in mind that, although it cannot be ruled out that the coexistence of two marks on a particular market may, in certain cases, eliminate the likelihood of confusion on the part of the relevant public, certain conditions must also be satisfied. That possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 26 July 2023, Rada Perfumery v EUIPO – Prada (RADA PERFUMES), T‑439/22, not published, EU:T:2023:441, paragraphs 74 and 75 and the case-law cited).
75      Accordingly, it is for the applicant to prove not only the coexistence of the trade marks, but also that that coexistence was due to the absence of a likelihood of confusion, and to have done so by adducing evidence such as opinion polls, declarations of consumers’ associations or other evidence. That demonstration may be made by way of a body of evidence. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time when the application for registration of the contested mark was filed is particularly relevant (see judgment of 26 July 2023, RADA PERFUMES, T‑439/22, not published, EU:T:2023:441, paragraph 76 and the case-law cited).
76      In the present case, the applicant has not put forward any argument supporting the claim that it had proven that those conditions had been satisfied.
77      Furthermore, with regard to the applicant’s argument that, if an undertaking freely chooses a mark with weak distinctiveness, including trade marks whose elements are descriptive and non-distinctive, it must, in return, accept that its competitors may also use marks with similar or identical descriptive elements, first, it should be recalled, as is apparent from paragraph 30 above, that the common element ‘acryl’ is not descriptive, but only weakly distinctive. Secondly, according to case-law, a finding of a likelihood of confusion leads solely to the protection of a certain combination of elements without, however, a descriptive element which forms part of that combination being protected as such (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 58 and the case-law cited). Consequently, the proprietor of the earlier mark cannot, under any circumstances, claim an exclusive right to the element ‘acryl’.
78      Taking into account all the factors and circumstances of the case, as they follow from paragraphs 69 to 77 above, the Board of Appeal correctly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
79      Accordingly, it is appropriate to reject the applicant’s arguments relating to the global assessment of the likelihood of confusion and, consequently, to dismiss the action in its entirety.
Costs
80      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.
81      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is held, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Cin Valentine, SA to bear its own costs and to pay those incurred by DAW SE.
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Gâlea
Ricziová
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 10 December 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.