JUDGMENT OF THE GENERAL COURT (Second Chamber)
3 July 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark Sanitix – Earlier EU figurative mark SANYTOL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Increased distinctiveness of the earlier mark)
In Case T‑358/23,
AC Marca Brands, SL, established in Alcobendas (Spain), represented by D. Pellisé Urquiza and J.C. Quero Navarro, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Sanitix Ltd, established in London (United Kingdom),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, R. Norkus and L. Spangsberg Grønfeldt (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 present
Judgment
1        By its action under Article 263 TFEU, the applicant, AC Marca Brands, SL, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 May 2023 (Case R 1954/2022-1) (‘the contested decision’).
Background to the dispute
2        On 24 August 2020, Sanitix Ltd filed an application for registration of an EU trade mark with EUIPO for the word sign Sanitix.
3        The trade mark applied for designated goods relating to hygiene and disinfection, falling within Classes 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4        On 3 December 2020, the applicant 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 primarily on the earlier EU figurative trade mark reproduced below, registered on 24 July 2008 under number 6 383 161 for goods relating to hygiene and disinfection in Classes 3 and 5.
6        The opposition was also based on other trade marks covering goods relating to hygiene and disinfection in Classes 3 and 5, namely, first, the EU word mark SANYTOL, Zdravý životní styl, registered under number 12 175 361, secondly, international registration No 604 620 designating Spain for the word mark SANYTOL, thirdly, the French word mark SANYTOL, registered under number 1 597 231, and fourthly, the Spanish word mark SANYTOL, LA HIGIENE QUE CAMBIA LAS NORMAS, registered under number M 3 687 558.
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) 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).
8        On 2 August 2022, the Opposition Division rejected the opposition.
9        On 5 October 2022, the applicant appealed to EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal dismissed the appeal, basing its reasoning principally on the earlier EU figurative trade mark described in paragraph 5 above.
11      In the first place, as regards Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal began, for reasons of procedural economy, by assuming that the goods in question were identical. It then found that those goods were intended for both the general public and professional customers and that the consumer’s level of attention varied from average to high depending on the specialised nature of the goods and their impact on health. With regard to the signs at issue, after analysing their constituent elements, it considered that their visual, phonetic and conceptual similarity was weak. Despite a certain reputation of the earlier trade marks in the European Union, at least for disinfectants in Class 5, and the assumption that the goods in question were identical, the Board of Appeal found that the signs at issue coincided only in their initial parts, which had a reduced distinctive character, and that this similarity did not outweigh their differences, so that there was no likelihood of confusion. It extrapolated that conclusion to all the earlier marks that had been relied on in support of the opposition.
12      In the second place, the Board of Appeal held that, despite a certain reputation of the earlier trade marks in the European Union, at least for disinfectants in Class 5, and despite the fact that the consumers of those disinfectants were in part the same as the consumers of some of the goods covered by the trade mark applied for, the visual, phonetic and conceptual similarity of the signs at issue related to weak distinctive elements and therefore did not create a sufficient link between those signs to justify the application of Article 8(5) of Regulation 2017/1001.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs of the proceedings before the Court, the Board of Appeal and the Opposition Division.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred in the event that a hearing is convened.
Law
15      The applicant relies, in essence, on two pleas in law, the first alleging infringement of Article 8(1)(b) of Regulation 2017/1001 and the second alleging infringement of Article 8(5) of that regulation.
16      By its first plea in law, the applicant complains that the Board of Appeal failed to find that there was a high degree of visual, phonetic and conceptual similarity between the trade mark applied for and the earlier EU figurative trade mark and that it failed to find a likelihood of confusion.
17      EUIPO considers that the Board of Appeal was right to find a low degree of similarity between the trade marks at issue and to exclude any likelihood of confusion.
18      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is to be refused registration where, because of its identity with, or similarity to, an 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 mark.
19      The risk that the public might believe that the goods or services at issue 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).
20      Where the protection of the earlier trade mark extends to the whole of the European Union, the perception of the trade marks at issue by the consumer of the goods or services at issue in that territory must be taken into account. However, it should be noted that, in order to refuse registration of an EU trade mark, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation 2017/1001 exists in a part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).
The relevant territory and public
21      The Board of Appeal considered that the relevant territory was that of the whole of the European Union. It also found that the goods in question were aimed at both the general public and professional customers and that the consumer’s level of attention varied from average to high depending on the specialised nature of the goods and their impact on health.
22      There is no need to call into question those findings, which are, moreover, not disputed by the applicant.
The comparison of the goods
23      The Opposition Division found that some of the goods covered by the trade mark applied for were identical with, or similar to, the goods covered by the earlier EU figurative trade mark. However, for reasons of procedural economy, it decided to proceed on the assumption, most favourable to the applicant, that the goods at issue were identical.
24      The Board of Appeal followed the same approach, which is not contested by the applicant.
The comparison of the signs
25      In the first place, the applicant claims that the Board of Appeal erred in its assessment of the initial parts of the signs at issue, namely the element ‘sanit’ in the contested sign Sanitix and the element ‘sanyt’ in the earlier sign, the full word element of which is ‘sanytol’. In the second place, the applicant criticises the errors affecting the visual, phonetic and conceptual comparison of the signs at issue in the contested decision.
26      EUIPO replied to the applicant that the Board of Appeal was right to consider that the different endings of the signs at issue, namely ‘ix’ in the contested sign and ‘ol’ in the earlier sign, compensated for the common elements with a low degree of distinctiveness at the beginning of those signs. It added that, if an undertaking is free to choose a trade mark containing a component with a low degree of distinctiveness, it must accept, in return, that its competitors also have the right to use trade marks containing similar or identical descriptive elements. The Board of Appeal therefore correctly concluded that the signs at issue had a low degree of similarity overall.
27      It should be noted that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by them, taking into account, in particular, their distinctive and dominant elements. The average consumer’s perception of the trade marks in relation to 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 proceed to analyse 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).
The distinctive elements of the signs at issue
28      The applicant complains that the Board of Appeal took the view that, because of their connection in certain languages (in particular English) with hygiene, disinfection or cleaning, the initial parts of the signs had a reduced distinctive character in relation to the goods at issue. According to the applicant, even if those initial parts of the trade marks at issue, namely ‘sanit’ and ‘sanyt’, could allude to the concept of ‘sanitary’, they could not be negligible in the overall impression because of their size and position. Furthermore, the Board of Appeal wrongly considered that the last two letters of the signs at issue constituted their most distinctive parts.
29      EUIPO submits that the applicant does not contest the Board of Appeal’s assessment that, for the majority of the relevant public, the initial parts of the signs at issue have a reduced distinctive character in relation to the goods in question. It contends that the applicant criticises instead the manner in which the Board of Appeal determined the relative weight of the elements which coincide and those which differ in the overall impression created by the signs. According to EUIPO, contrary to what the applicant maintains, the Board of Appeal did not consider that the initial parts common to the signs at issue were negligible or precluded all similarities between them, but took them duly into account in assessing the similarities and differences between those signs. However, since those common initial parts have a reduced distinctive character, the Board of Appeal correctly conferred a compensatory role on the endings of the signs at issue.
30      It follows from the case-law that, notwithstanding the fact that it is normally appropriate to assess the similarity of the signs at issue on the basis of the overall impression produced by them without examining their various details (see paragraph 27 above), the relevant public will break a word sign down into word elements which, for it, suggest a specific meaning or which resemble words known to it (see judgment of 30 March 2022, SFD v EUIPO – Allmax Nutrition (ALLNUTRITION DESIGNED FOR MOTIVATION), T‑35/21, not published, EU:T:2022:173, paragraph 41 and the case-law cited).
31      In the present case, the Board of Appeal began by analysing the contested word sign Sanitix, noting that, taken as a whole, it had no meaning in any of the languages of the European Union and therefore had a normal distinctive character in relation to the goods it covered. However, like the Opposition Division, it also considered that it was likely that a large majority of the relevant public would perceive the initial part ‘sanit’ of the contested sign separately and that, because of its proximity to the basic English term ‘sanitary’, it would understand that initial part of the sign as referring to hygiene. Accordingly, as far as that part of the relevant public was concerned, the Board of Appeal concluded that the initial part of the contested sign had a reduced distinctive character in relation to the goods covered by that sign. Nevertheless, it stated that another part of the relevant public, that of Greek or Hungarian speakers who do not speak English, would see that initial part as devoid of meaning and therefore as having a normal distinctive character. Finally, the ending ‘ix’ in the contested sign would have no meaning in the eyes of the relevant public and would therefore have a normal degree of distinctiveness.
32      As regards the earlier sign, the Board of Appeal noted that it was figurative. By reasoning analogous to that relating to the contested sign, it found that the identical word element ‘sanytol’ in the earlier sign had a normal distinctive character if taken as a whole, but that its initial part ‘sanyt’ was allusive and had a reduced degree of distinctive character for part of the relevant public. As for the ending ‘ol’, according to the Board of Appeal, it has a reduced distinctive character for consumers attributing to it a link with alcohol in the field of chemistry, but this distinctive character was normal for those who saw it as a fanciful element. As regards the figurative elements of the earlier sign, consisting of three coloured polygons and a stylised white font, they were merely decorative and therefore had only a low degree of distinctiveness.
33      First of all, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not consider that the initial parts of the signs at issue, namely ‘sanit’ and ‘sanyt’, were negligible in the overall impression produced by those signs. Rather, it simply concluded that those initial parts had a weak distinctive character in relation to the goods covered by the trade marks at issue.
34      Next, it should be noted that both the goods covered by the trade mark applied for and the goods covered by the earlier EU figurative trade mark relate to hygiene and disinfection.
35      Accordingly, having regard to the meaning of the English word ‘sanitary’ and equivalent words in several languages of the European Union derived from the same Latin word ‘sanitas’, the Board of Appeal was right to find that the vast majority of the relevant public would perceive in the signs at issue, because of their initial part ‘sanit’ and ‘sanyt’, an allusion to the nature and characteristics of the goods in question in the fields of hygiene and disinfection.
36      The Court points out, however, that it is not because a large part of the public will perceive such an allusion to hygiene on account of the initial part ‘sanit’ and ‘sanyt’ of the signs at issue that it will break down the words ‘sanytol’ and ‘sanitix’ into a first element ‘sanyt’ or ‘sanit’ and a second element ‘ol’ or ‘ix’ respectively. First, nothing, such as the font used in the earlier EU figurative trade mark, leads to those words being split in that way. Secondly, the identification of two elements ‘sanyt’ and ‘ol’ or ‘sanit’ and ‘ix’ does not correspond to the syllabic division of the words ‘sanytol’ and ‘sanitix’. Thirdly, at least for part of the relevant public, the alleged elements ‘ol’ or ‘ix’ have no meaning.
37      It must therefore be held that the relevant public will perceive the words ‘sanytol’ and ‘sanitix’ as constituting an indivisible whole and not as being composed of two distinct elements, one of which, ‘sanyt’ or ‘sanit’, has a weak distinctive character and the other, ‘ol’ or ‘ix’, a normal distinctive character. Accordingly, the Board of Appeal wrongly considered that the relevant public would focus its attention on the ‘ol’ or ‘ix’ ending of the signs at issue because that ending would constitute the most distinctive element.
38      Consequently, a comparison of the signs at issue must be made taking account of the words ‘sanytol’ and ‘sanitix’ as a whole.
The visual comparison
39      The applicant observes that the beginning of the mark applied for Sanitix coincides with the word element ‘sanytol’ in the earlier EU figurative trade mark, except for the letters ‘i’ and ‘y’. It acknowledges that the end of the mark applied for (‘ix’) differs from that of the word element of the earlier EU figurative trade mark (‘ol’), but, in its view, the Board of Appeal failed to note the important role of the initial parts of the signs at issue, in particular the fact that, despite their allusive nature, they account for two thirds of those signs. Accordingly, there was a high degree of visual similarity between the marks at issue.
40      EUIPO takes the view that the Board of Appeal rightly found a low degree of visual similarity between the signs at issue.
41      In the present case, the Board of Appeal found that the low degree of visual similarity of the signs at issue arose from the fact that they coincided in the presence of the letters ‘s’, ‘a’, ‘n’ and ‘t’ in their initial parts, ‘sanit’ and ‘sanyt’, and that they differed in their fourth letters, ‘i’ and ‘y’, and in their endings, ‘ix’ and ‘ol’. It considered that the initial parts of the two signs had a weak distinctive character, whereas the endings constituted their most distinctive parts. It also emphasised the differences resulting from the stylisation and figurative elements of the earlier EU figurative trade mark.
42      Like the Board of Appeal, it must be noted that the signs at issue share the same initial sequence of three letters placed in the same order, namely the letters ‘s’, ‘a’ and ‘n’, as well as the fifth letter ‘t’, which, in the present case, is of some importance in assessing the visual similarities between those signs (see, to that effect, judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 39 and the case-law cited). Furthermore, although the verbal elements of the signs at issue differ in their fourth letter, namely the letter ‘i’ in the contested sign and the letter ‘y’ in the verbal element of the earlier sign, that difference is not, however, visually significant. By contrast, those elements clearly differ by their ending, namely ‘ix’ in the contested sign and ‘ol’ in the verbal element of the earlier sign.
43      In that regard, it was found in paragraph 37 above that the Board of Appeal wrongly considered that the relevant public would focus its attention on the ‘ol’ or ‘ix’ endings of the signs at issue.
44      It should also be noted that the figurative elements of the earlier sign were considered to be decorative and therefore of having a weak distinctive character, without that being disputed by any of the parties. In that regard, where a trade mark is composed of 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 their name than by describing the figurative element of the trade mark (see judgment of 28 September 2022, COPAL TREE, T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
45      Accordingly, it must be held that, having regard to the similarities found in the word elements of the signs at issue, the signs have an average degree of visual similarity and that the Board of Appeal committed an error of assessment when it found that the degree of visual similarity was low.
The phonetic comparison
46      The applicant considers that the similarities revealed by the visual comparison of the signs at issue are even more obvious from a phonetic point of view, particularly in view of the fact that the initial parts ‘sanit’ and ‘sanyt’ are pronounced identically and that all the signs consist of three syllables.
47      EUIPO does not find any error in the contested decision as regards the phonetic comparison of the signs at issue.
48      In the present case, as in the visual comparison, the Board of Appeal relied mainly on the reduced distinctive character of the initial parts of the signs at issue to conclude that there was a low degree of phonetic similarity.
49      In that regard, it must be considered, as the Board of Appeal held, that the French‑, Italian- and Spanish-speaking public will pronounce the ‘sanit’ and ‘sanyt’ parts of the signs at issue in the same way, that is to say, a substantial part of them. It should also be borne in mind that, contrary to what the Board of Appeal considered, the relevant public will not focus its attention on the ending of the signs at issue. In that context, the fact that the pronunciation of the endings ‘ol’ and ‘ix’ differs is not such as to establish only a low degree of phonetic similarity.
50      It follows that the signs at issue must be attributed an average degree of phonetic similarity, and not a low degree, as the Board of Appeal erroneously held.
The conceptual comparison
51      From a conceptual point of view, like the Board of Appeal, the applicant divides the relevant public into two groups: the first consists of that part of the relevant public which may perceive the beginning of the trade marks at issue as alluding to the concept conveyed by the word ‘sanitary’; the second group is that which will not have such a perception, for example the Greek- or Hungarian‑speaking public. In any event, whatever the group, the applicant claims that the Board of Appeal did not find a sufficient degree of conceptual similarity.
52      EUIPO replies to the applicant that the reasoning of the Board of Appeal concerning the conceptual similarity of the signs is not flawed because, as stated in the contested decision, the Hungarian- or Greek-speaking public would not perceive any allusion in those common initial parts, which would then have, for the public speaking one of those two languages, a normal distinctive character. That public constitutes only a negligible part of the relevant public.
53      In the present case, the Board of Appeal considered that, although the signs could not be compared from a conceptual point of view on the ground that they were devoid of meaning, they could be regarded as being only slightly similar for that part of the relevant public which would perceive their initial part as an allusion to the nature and characteristics of the goods in question.
54      In that regard, it should be borne in mind that it is settled case-law that conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 29 November 2023, Beauty Boutique v EUIPO – Lightningbolt Europe (Representation of a lightning bold), T‑12/23, not published, EU:T:2023:768, paragraph 42 and the case-law cited).
55      Consequently, for that part of the relevant public which can perceive the beginning of the trade marks at issue as alluding to the concept conveyed by the word ‘sanitary’, the conceptual similarity between them is average and the Board of Appeal was therefore wrong to find that there was a low degree of conceptual similarity. For the part of the relevant public that does not have that perception, the conceptual comparison will not be possible.
The distinctive character of earlier marks
56      In the contested decision, the Board of Appeal confirmed the findings of the Opposition Division that the evidence adduced by the applicant had established that the earlier trade marks had considerable reputation in Spain and France and, at least as regards ‘disinfectants’ in Class 5, a certain reputation in the European Union.
57      It should be noted that neither the applicant nor EUIPO disputes those findings.
The likelihood of confusion
58      The applicant claims that the Board of Appeal should have found that there was a likelihood of confusion, having regard, in its view, to the identity of the goods in question, the fact that those goods belong to the same markets or closely related markets and the high degree of similarity between the signs. According to the applicant, there is also a likelihood that the relevant public will think that the mark applied for Sanitix designates goods forming part of a secondary range linked to the earlier EU figurative mark.
59      EUIPO considers that, because the similarities between the signs are limited to those elements which have a reduced distinctive character and because the Board of Appeal carried out a full examination of those signs, it was justified in concluding that there was no likelihood of confusion. It also submits that, in the present case, the reputation of the earlier trade marks has no bearing on that conclusion, since the applicant has not adduced any evidence of exceptional reputation. Furthermore, the applicant fails to take account of the fact that the increased distinctiveness of the earlier trade marks and their reputation refer to them as such and as a whole, and not to a single particular element.
60      It should be borne in mind that the 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
61      As follows from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the relevant market. Since the likelihood of confusion is greater the more distinctive the trade mark, trade marks which are highly distinctive, either intrinsically or because of the public’s recognition of them, enjoy greater protection than those with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
62      In the present case, the Board of Appeal concluded that, even assuming that the goods in question were identical, the differences between the signs, in particular their endings which are clearly perceptible to consumers, would enable the relevant public to distinguish them without a likelihood of confusion or association. The similarity of their weak distinctive initial parts would not be sufficient to compensate for those differences. Given their low degree of visual, phonetic and conceptual similarity, and despite a certain degree of reputation of the earlier trade marks in the European Union, at least for the ‘disinfectants’ in Class 5, there is no likelihood of confusion.
63      It should be noted that the Court found, in paragraphs 45, 50 and 55 above, that the Board of Appeal had erred in its assessment of the similarities of the signs at issue, those similarities being average from each of the three relevant angles, namely visually, phonetically and conceptually.
64      Admittedly, the average degree of similarity between the signs at issue stems from their initial parts ‘sanyt’ and ‘sanit’, which refer to hygiene and thus to the nature and characteristics of the goods and services in question (see paragraph 35 above). Where the elements of similarity between two signs arise from the fact that, as in the present case, they share a component which has a weak inherent distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M.J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
65      However, in the context of the global assessment of the likelihood of confusion, account must also be taken of the distinctive character enhanced by the use of the earlier trade marks which, as pointed out in paragraph 56 above, have an established reputation, particularly in Spain and France, but also, to a lesser extent, throughout the European Union. In accordance with the case-law referred to in paragraph 61 above, the likelihood of confusion is greater the more distinctive the earlier trade mark, in particular because of its use.
66      Accordingly, by virtue of the principle of interdependence referred to in paragraph 60 above, taking into account the average degree of visual, phonetic and conceptual similarity between the signs at issue, as well as the distinctive character increased by the use of the earlier trade marks, and despite the high level of attention on the part of the consumer of certain goods concerned, the Board of Appeal could not, on the basis of the assumption that the goods in question are identical, exclude the existence of a likelihood of confusion in the present case.
67      It follows that the Board of Appeal was wrong to conclude that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
68      Consequently, the first plea in law must be upheld as well founded, and the contested decision must therefore be annulled, without it being necessary to examine the second plea in law.
Costs
69      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.
70      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant for the purposes of the proceedings before the Court, as requested by the applicant.
71      In addition, in so far as the applicant also claimed that EUIPO should be ordered to pay the costs relating to the proceedings before the Opposition Division and the Board of Appeal, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the applicant’s claim regarding the costs relating to the proceedings before the Opposition Division, which do not constitute recoverable costs, is inadmissible. As regards the applicant’s claim relating to the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to those proceedings (see, to that effect, judgment of 6 June 2018, Glaxo Group v EUIPO – Celon Pharma (SALMEX), T‑803/16, not published, EU:T:2018:330, paragraphs 37 to 39 and the case-law cited).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 May 2023 (Case R 1954/2022-1);
2.      Orders EUIPO to bear its own costs and to pay those incurred by AC Marca Brands, SL for the purposes of the proceedings before the General Court;
3.      Dismisses the action as to the remainder.
Marcoulli
Norkus
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 3 July 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.