JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
13 June 2019
(*)
(EU trade mark — Invalidity proceedings — EU figurative mark DERMÆPIL sugar epil system — Earlier national figurative mark dermépil — Relative ground for refusal — Genuine use of the mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 (now Article 64 (2) and (3) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001) — Comparison of the goods
In Case T‑398/18,
Radoslaw Pielczyk, residing in Klijndijk (Netherlands), represented by K. Kielar, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and K. Kompari, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO and intervener before the Court, being
Thalgo TCH, established in Roquebrune-sur-Argens (France), represented by C. Bercial Arias, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 April 2018 (Joined Cases R 979/2017-4 and R 1070/2017-4) concerning invalidity proceedings between Thalgo TCH and Mr Pielczyk,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, R. Barents (Rapporteur) and J. Passer, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 June 2018,
having regard to the response of EUIPO lodged at the Court Registry on 13 September 2018,
having regard to the response of the intervener lodged at the Court Registry on 6 September 2018,
having regard to the measure of organisation of procedure of 15 January 2019 and the reply of the applicant lodged at the Court Registry on 31 January 2019,
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
Background to the dispute
1        On 12 March 2013, the applicant, Radoslaw Pielczyk, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in, inter alia, 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, and correspond, for each of those classes, to the following description:
–        Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Ammonia [volatile alkali] [detergent]; Aloe vera preparations for cosmetic purposes; Alum stones [astringents]; Shaving stones [astringents]; Antiperspirants [toiletries]; Non- slipping liquids for
floors; Non-slipping wax for floors; Antistatic preparations for household purposes; Badian essence; Cake flavourings [essential oils]; Flavorings for beverages [essential oils]; Aromatics [essential oils]; Balms other than for medical purposes; Colorants for toilet purposes; Cosmetic dyes; Bergamot oil; Laundry soaking preparations; Lip glosses; Beard dyes; Eyebrow cosmetics; Amber [perfume]; Tissues impregnated with cosmetic lotions; Cleaning preparations; Make-up removing preparations; Depilatories; Detergents other than for use in manufacturing operations and for medical purposes; Deodorants for human beings or for animals; Deodorants for pets; Scented wood; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal essences; Ethereal oils; Hair dyes; Paint stripping preparations; Geraniol; Shaving soap; Shaving preparations; Heliotropine; Henna [cosmetic dye]; Jasmine oil; Ionone [perfumery]; Polishing rouge; Joss sticks; Incense; Decorative transfers for cosmetic purposes; Scale removing preparations for household purposes; Smoothing stones; Cosmetic preparations for baths; Adhesives for affixing false hair; Color brightening chemicals for household purposes [laundry]; Leather preservatives [polishes]; Corundum [abrasive]; Cosmetics; Cosmetics for animals; Cosmetic preparations for slimming purposes; Make-up; Cleaning chalk; Whiting; Shoe cream; Cosmetic creams; Skin whitening creams; Laundry starch; Smoothing preparations [starching]; Silicon carbide [abrasive]; Bases for flower perfumes; Nail polish; Varnish-removing preparations; Lotions for cosmetic purposes; Tripoli stone for polishing; Make-up preparations; Beauty masks; Abrasives; Abrasive paper; Potpourris [fragrances]; Mint for perfumery; Mint essence [essential oil]; Cleansing milk for toilet purposes; Almond milk for cosmetic purposes; Cakes of soap; Soaps; Deodorant soap; Disinfectant soap; Soap for brightening textile; Medicated soap; Almond soap; Antiperspirant soap; Soap for foot perspiration; Quillaia bark for washing; Nail art stickers; Neutralizers for permanent waving; Color-removing preparations; Breath freshening sprays; Degreasers other than for use in manufacturing processes; Fumigation preparations [perfumes]; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oil of turpentine for degreasing; Oils for cosmetic purposes; Oils for perfumes and scents; Essential oils of citron; Essential oils of lemon; Oils for toilet purposes; Eyebrow pencils; Cosmetic pencils; Grinding preparations; Sandpaper; Wallpaper cleaning preparations; Pastes for razor strops; Breath freshening strips; Shoe polish; Polish for furniture and flooring; Nail care preparations; Perfumery; Perfumes; Musk [perfumery]; Sandcloth; Glass cloth; Hair lotions; After-shave lotions; Javelle water; Polishing stones; Polishing creams; Polishing paper; Furbishing preparations; Denture polishes; Polishing preparations; Shining preparations [polish]; Pomades for cosmetic purposes; Volcanic ash for cleaning; Canned pressurized air for cleaning and dusting purposes; Laundry glaze; Dry-cleaning preparations; Laundry preparations; Preparations to make shiny the leaves of plants; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Preparations for cleaning dentures; Adhesives for cosmetic purposes; Make-up powder; Pumice stone; Rust removing preparations; Cosmetic preparations for eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Safrol; Sachets for perfuming linen; Cloths impregnated with a detergent for cleaning; Leather bleaching preparations; Cosmetic preparations for skin care; Starch glaze for laundry purposes; Washing soda, for cleaning; Bleaching soda; Soda lye; Bath salts, not for medical purposes; Bleaching salts; Windscreen cleaning liquids; Dentifrices; Scouring solutions; Air fragrancing preparations; Drying agents for dishwashing machines; Laundry blueing; Dry shampoos; Shampoos; Shampoos for pets; Shoemakers’ wax; Emery; Emery paper; Emery cloth; Lipsticks; Floor wax removers [scouring preparations]; False nails; Talcum powder, for toilet use; Turpentine, for degreasing; Terpenes [essential oils]; Diamantine [abrasive]; Greases for cosmetic purposes; Toiletries; Astringents for cosmetic purposes; Mascara; Preparations for unblocking drain pipes; Mouth washes, not for medical purposes; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Petroleum jelly for cosmetic purposes; Carbides of metal [abrasives]; Gaultheria oil; Hair spray; Hair waving preparations; Eau de Cologne; Lavender water; Toilet water; Hydrogen peroxide for cosmetic purposes; Scented water; Shoe wax; Depilatory wax; Floor wax; Waxes for leather; Mustache wax; Tailors’ wax; Polishing wax; Laundry wax; Cobblers’ wax; Bleaching preparations [decolorants] for cosmetic purposes; Laundry bleach; Stain removers; Massage gels other than for medical purposes; Dental bleaching gels; Cosmetic kits; Fabric softeners for laundry use; Lacquer-removing preparations;
–        Class 5: ‘Aloe vera preparations for pharmaceutical purposes; Bath salts for medical purposes; Bath preparations, medicated; Therapeutic preparations for the bath; Oxygen baths; Deodorants for clothing and textiles; Medicinal oils; Oil of turpentine for pharmaceutical purposes; Mouthwashes for medical purposes; Remedies for perspirations; Vaginal washes; Air deodorising preparations; Air purifying preparations; Pharmaceutical preparations for skin care; Remedies for foot perspiration; Serums; Medicinal hair growth preparations; Sea water for medicinal bathing; Animal washes.’
4        The EU trade mark application was published in the Community Trade Marks Bulletin on 31 October 2013 and was registered on 22 September 2014.
5        On 22 October 2015, the intervener, Thalgo TCH, filed an application for a declaration of invalidity under Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) in respect of the registration of the contested trade mark for all the goods registered, including those referred to in paragraph 3 above.
6        The application for a declaration of invalidity was based on the following earlier French figurative mark, filed and registered on 27 September 1988:
7        The earlier mark is registered for the following goods in Class 3: ‘Perfumery products, cosmetics, including wax for hair removal’.
8        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9        At the request of the applicant, lodged on 3 February 2016, on the basis of Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001), EUIPO requested the intervener to provide proof of use of the earlier mark for the goods on which the application for a declaration of invalidity was based.
10      On 18 July 2016, the intervener submitted evidence in support of its assertion that the earlier mark was put to genuine use in France.
11      By decision of 21 March 2017, the Cancellation Division partially upheld the application for a declaration of invalidity of the contested mark for the following goods in Class 3: ‘Soaps; cosmetics, hair lotions; Aloe vera preparations for cosmetic purposes; shaving stones [astringents]; Antiperspirants [toiletries]; Balms other than for medical purposes; Colorants for toilet purposes; Cosmetic dyes; Lip glosses; Beard dyes; Eyebrow cosmetics; Tissues impregnated with cosmetic lotions; Make-up removing preparations; Depilatories; Deodorants for human beings; Hair dyes; Shaving soap; Shaving preparations; Henna [cosmetic dye]; Decorative transfers for cosmetic purposes; Cosmetic preparations for baths; Adhesives for affixing false hair; Cosmetics; Cosmetic preparations for slimming purposes; Make-up; Cosmetic creams; Skin whitening creams; Nail polish; Varnish-removing preparations; Lotions for cosmetic purposes; Make-up preparations; Beauty masks; Cleansing milk for toilet purposes; Almond milk for cosmetic purposes; Cakes of soap; Soaps; Deodorant soap; Disinfectant soap; Medicated soap; Almond soap; Antiperspirant soap; Soap for foot perspiration; Nail art stickers; Neutralizers for permanent waving; Color-removing preparations; Oils for cosmetic purposes; Oils for toilet purposes; Eyebrow pencils; Cosmetic pencils; Nail care preparations; Hair lotions; After-shave lotions; Pomades for cosmetic purposes; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Douching preparations for personal sanitary or deoderant purposes [toiletries]; Adhesives for cosmetic purposes; Make-up powder; Pumice stone; Cosmetic preparations for eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Cosmetic preparations for skin care; Bath salts, not for medical purposes; Dry shampoos; Shampoos; Lipsticks; False nails; Talcum powder, for toilet use; Greases for cosmetic purposes; Toiletries; Astringents for cosmetic purposes; Mascara; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Petroleum jelly for cosmetic purposes; Hair spray; Hair waving products; Hydrogen peroxide for cosmetic purposes; Depilatory wax; Mustache wax; Bleaching preparations [decolorants] for cosmetic purposes; Massage gels other than for medical purposes; Cosmetic kits; Lacquer-removing preparations’.
12      On 11 May 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation
2017/1001), against the decision of the Cancellation Division, on the ground, in essence, that genuine use of the earlier mark had not been proven and, secondly, that there was no likelihood of confusion between the marks at issue.
13      On 17 May 2017, the intervener also lodged an appeal with EUIPO under Articles 58 to 60 of Regulation No 207/2009 against the Cancellation Division’s decision, on the ground that the invalidity of the contested trade mark should also have been declared in respect of the following goods in Class 3: ‘Cleaning preparations; Perfumery, essential oils; Dentifrices; Alum stones [astringents]; Badian essence; Aromatics [essential oils]; Bergamot oil; Amber [perfume]; Cleaning preparations; Scented wood; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal essences; Ethereal oils; Geraniol; Heliotropine; Jasmine oil; Ionone [perfumery]; Joss sticks; Incense; Smoothing stones; Smoothing preparations [starching]; Bases for flower perfumes; Potpourris [fragrances]; Mint for perfumery; Mint essence [essential oil]; Quillaia bark for washing; Breath freshening sprays; Fumigation preparations [perfumes]; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oils for perfumes and scents; Essential oils of citron; Oils for toilet purposes; Grinding preparations; Pastes for razor strops; Breath freshening strips; Perfumery; Perfumes; Musk [perfumery]; Polishing stones; Polishing creams; Polishing paper; Denture polishes; Preparations for cleaning dentures; Safrol; Bleaching salts; Dentifrices; Air fragrancing preparations; Terpenes [essential oils]; Mouth washes, not for medical purposes; Gaultheria oil; Eau de Cologne; Lavender water; Toilet water; Scented water; Dental bleaching gels.’
14      In the proceedings before the Board of Appeal, the intervener submitted, on 31 January 2018, new evidence in support of genuine use of the earlier mark.
15      By decision of 13 April 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO joined the two appeals, dismissed the applicant’s appeal and partially allowed the intervener’s appeal for the following goods in Class 3, for which the registration was therefore cancelled: ‘Cleaning preparations; Perfumery, essential oils; Dentifrices; Alum stones [astringents]; Badian essence; Aromatics [essential oils]; Bergamot oil; Amber [perfume]; Cleaning preparations; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal oils; Geraniol; Heliotropine; Ionone [perfumery]; Smoothing stones; Smoothing preparations; Bases for flower perfumes; Mint for perfumery; Mint essence [essential oil]; Quillaia bark for washing; Breath freshening sprays; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oils for perfumes and scents; Essential oils of citron; Oils for toilet purposes; Grinding preparations; Pastes for razor strops; Breath freshening strips; Perfumery; Perfumes; Musk [perfumery]; Polishing stones; Polishing creams; Polishing paper; Denture polishes; Preparations for cleaning dentures; Safrol; Bleaching salts; Dentifrices; Air fragrancing preparations; Terpenes [essential oils]; Mouth washes, not for medical purposes; Gaultheria oil; Eau de Cologne; Lavender water; Toilet water; Scented water; Dental bleaching gels’.
16      As regards, in the first place, the proof of genuine use of the earlier national mark, the Board of Appeal first of all accepted, in paragraph 24 of the contested decision, the admissibility of the new evidence submitted to it by the intervener, since it concerned additional elements of genuine relevance.
17      The Board of Appeal then noted, in paragraph 26 of the contested decision, that most of the evidence referred to the relevant period and held, in paragraph 30 of that decision, that the invoices produced provided sufficient guidance as to the extent of use and commercial volume of such use.
18      The Board of Appeal held, finally, in paragraph 33 of the contested decision, that the evidence showed that the earlier mark had been used as a trade mark and, in paragraph 38 of that decision, that the use of the mark in the form of variations did not alter its distinctive character. It also endorsed, in paragraph 46 of that decision, the decision of the Cancellation Division, in that it had found that the evidence proved use for ‘wax products for depilatory purposes’, which could fall into an objective subcategory of ‘perfumery products and cosmetics, namely depilatory preparations’, so that genuine use had been proved for ‘depilatory preparations’. The Board of Appeal added, however, that genuine use had not been shown for perfumery products relating to depilation, because, even though some of the products may have been scented, all the additional evidence related to use for lotions, serums, scrubs and oils. The Board of Appeal therefore concluded, in paragraph 47 of the contested decision, that genuine use of the earlier mark had been shown for ‘cosmetics for depilatory purposes’.
19      As regards, in the second place, the comparison of the goods, the Board of Appeal classified them into seven distinct groups and, at the end of its analysis, endorsed the cancellation, by the Cancellation Division, of the registration of the contested mark for the goods mentioned in paragraph 11 above and extended the cancellation to the goods mentioned in paragraph 15 above, on the ground that there were similarities between the latter goods and the ‘cosmetics for depilatory purposes’ referred to in the earlier trade mark, ranging from similar to a low degree to very similar.
20      As regards, in the third place, the comparison of the marks at issue, the Board of Appeal, in paragraphs 80 and 83 of the contested decision,
considered that the latter were, visually, similar to an average degree and, phonetically, identical or, at the very least, highly similar. It found, in paragraph 84 of that decision, that, conceptually, even though the terms ‘dermaepil’ and ‘dermépil’ shared the notions of ‘derm’ or ‘derm/a’ and ‘epil’, none of those terms had any meaning as a whole, so that the conceptual comparison remained neutral. However, it went on to say, in paragraph 89 of the contested decision, that, for that part of the French public perceiving the same notion in those terms, the marks at issue were very similar.
21      As regards, in the fourth place, the global assessment of the likelihood of confusion, the Board of Appeal considered, in paragraphs 87 to 92 of the contested decision, that, as regards the goods mentioned in paragraphs 11 and 15 above, there was a likelihood of confusion between the marks at issue.
22      By decision of 16 August 2018, the Fourth Board of Appeal adopted a corrigendum to the contested decision, since some goods which, in the grounds of that decision, were considered to be dissimilar to the goods covered by the earlier mark were, however, incorrectly referred to in the operative part of that decision, in the list of goods for which the registration was cancelled. Moreover, paragraph 61 of the contested decision failed to mention ‘jasmine oil’ among the goods for which registration was cancelled. The list of goods covered by the contested mark whose registration is cancelled, which replaces the list in paragraph 15 above, must therefore, according to that corrigendum, read as follows:
–        Class 3: ‘Cleaning preparations; Perfumery, essential oils; Dentifrices; Alum stones [astringents]; Badian essence; Aromatics [essential oils]; Bergamot oil; Amber [perfume]; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal oils; Geraniol; Ionone [perfumery]; Smoothing stones; Smoothing preparations [starching]; Bases for flower perfumes; Mint for perfumery; Mint essence [essential oil]; Quillaia bark for washing; Breath freshening sprays; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oils for perfumes and scents; Essential oils of citron; Oils for toilet purposes; Grinding preparations; Pastes for razor strops; Breath freshening strips; Perfumery; Perfumes; Musk [perfumery]; Polishing stones; Polishing creams; Polishing paper; Denture polishes; Preparations for cleaning dentures; Safrol; Bleaching salts; Terpenes [essential oils]; Mouth washes, not for medical purposes; Gaultheria oil; Eau de Cologne; Lavender water; Toilet water; Scented water; Dental bleaching gels’.
23      By decision of 6 December 2018, the Fourth Board of Appeal adopted a corrigendum to the contested decision since, in the list, as summarised in the operative part of that decision, ‘Jasmine oil’ was still, as a result of an error, not included in the goods covered by the contested mark whose registration was cancelled. The list referred to in paragraph 22 above must therefore be understood as meaning that the words ‘jasmine oil’ appears between the words ‘geraniol’ and ‘ionone’.
Forms of order sought
24      The applicant claims that the Court should:
–        annul the contested decision;
–        order the intervener to pay the costs incurred in the proceedings before EUIPO and the defendant to pay the costs before the General Court.
25      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
26      The applicant puts forward three pleas in law in support of the action. The first plea alleges infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof. The second plea alleges infringement of Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1994 L 303, p. 1), as amended (now Article 10(3) of Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), read in conjunction with Rule 40(6) of that Regulation (now Article 17 of Regulation 2018/625). The third plea alleges infringement of Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001), read in conjunction with the second subparagraph of Article 15(1)(a) of that regulation (now the second subparagraph of Article 18(1)(a) of Regulation 2017/1001).
27      It is appropriate to examine, first, the second and third pleas in law, in so far as, by those pleas in law, the applicant calls into question, in essence, the genuine use of the earlier mark, and, secondly, the first plea in law, relating to the alleged absence of a likelihood of confusion between the marks at issue.
The second and third pleas, alleging, in essence, infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with second subparagraph of Article 15(1)(a) of that Regulation
28      In the context of the second and third pleas in law, which should be examined together, as well as the fact that the applicant also claims that, in addition to the fact that certain evidence was wrongly taken into consideration and that the evidence of use submitted by the intervener was, in any event, insufficient to demonstrate genuine use of the earlier trade mark within the meaning of Article 57(2) and (3) of Regulation No 207/2009, the form in which that trade mark had been used differed in elements altering the distinctive character of the trade mark as registered, contrary to the provisions of the second subparagraph of Article 15(1)(a) of that Regulation. It follows that the intervener should have had its rights revoked.
29      As a preliminary point, it should be noted that the applicant submits that the Board of Appeal relied on evidence which, according to Rule 22(3) and (4) of Regulation No 2868/95, should have been declared inadmissible, on the ground that evidence which does not indicate the place, time, extent and nature of the use made of the earlier mark should not have been taken into account.
30      In that regard, it suffices to note that that complaint does not relate to the admissibility of the evidence submitted by the intervener in the course of the administrative procedure, but only to its probative value, and therefore that complaint will be considered when examining the merits of that evidence.
31      In addition, it should be noted that the review of the legality of the contested decision will
be carried out in the light solely of the evidence which was produced during the administrative proceedings as it appears in EUIPO’s case file, and not with regard to the annexes transmitted in the course of the proceedings before the General Court (see, to that effect, judgment of 13 September 2016, Globo Comunicação e Participações v EUIPO (Sound mark), T‑408/15, EU:T:2016:468, paragraph 20 and the case-law cited).
32      First, the applicant argues that some of the evidence taken into consideration by the Board of Appeal did not relate to use of the earlier mark, as registered, but related to a trade mark whose form differed in elements which altered the distinctive character of the earlier mark.
33      In that regard, it should be recalled that, under the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 (now the second subparagraph of Article 18(1)(a) of Regulation 2017/1001), use of the European Union trade mark is considered to include use ‘in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’.
34      It must also be pointed out that it follows directly from the wording of the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 that the use of the trade mark in a form which differs from the form in which it was registered is regarded as use for the purposes of the first subparagraph of that article provided that the distinctive character of the mark in the form in which it was registered is not altered (judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; see also judgment of 13 September 2016, hyphen
v
EUIPO — Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 25 and the case-law cited).
35      For a trade mark to possess distinctive character for the purposes of Regulation No 207/2009, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited, and of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 26 and case-law cited).
36      It must be noted that the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 relates to a situation where a national or European Union registered trade mark is used in trade in a form slightly different from the form in which it was registered. The purpose of that provision, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27; see also, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 29; see also, by analogy, judgment of 25 October 2012, Rintisch, C‑553/11, EU:C:2012:671, paragraphs 21 and 22).
37      Thus, a finding of an alteration of the distinctive character of the mark registered requires an assessment of the distinctive and dominant character of the added elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 28 and the case-law cited).
38      It has also been held that where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 30 and the case-law cited).
39      It must also be remembered that, in order for the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign or their weak distinctive character (judgments of 21 June 2012, Fruit of the Loom v OHIM — Blueshore Management (FRUIT), T‑514/10, not published, EU:T:2012:316, paragraph 38, and of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31).
40      The applicant claims that the variations of the earlier mark taken into consideration by the Board of Appeal for the purposes of determining genuine use of that mark alter the distinctive character of that mark, as registered. Those variations are as follows:
41      In that regard, it must be noted that, as the Board of Appeal rightly held in paragraph 37 of the contested decision, the earlier mark as registered has been used in different variations. All those variants include the main word element ‘dermépil’, four of them the silhouette representing a woman and two of them the clearly legible word element ‘perron rigot’.
42      While it is true that the composition of the variants of the earlier mark set out in paragraph 40 above is different from that of the mark as registered, the modifications do not, however, affect the distinctive character of the mark as registered, in so far as this only consists of a different organisation of the various elements in which the word element ‘dermépil’, the figurative element of a woman’s silhouette in a circle and the word element ‘perron rigot’ appear, in a different composition and different colours.
43      Only the last variant of the earlier mark referred to in paragraph 40 above does not contain all the figurative and word elements of the mark as registered, but includes only the word element ‘dermépil’, which, since that element is the dominant element of that mark to which the public’s attention will mainly be drawn, does not entail any consequences as regards the distinctive character of the mark as registered.
44      It follows that it was without error that the Board of Appeal, in paragraph 38 of the contested decision, concluded that the variants of the earlier trade mark could be regarded as evidence of use in an acceptable variant.
45      Secondly, the applicant submits that the Board of Appeal failed to verify the completeness and usefulness of the evidence which, according to Rule 22(3) and (4) of Regulation No 2868/95, should be interpreted cumulatively, so that the information which did not relate to the place, time, extent and nature of the use which had been made of the earlier mark should not be taken into account. The applicant adds that the Board of Appeal’s reasoning is laconic and that the contested decision does not include any explanation as to why the Board of Appeal took into account certain elements of evidence.
46      In that regard, it should be noted that, as is apparent from recital 10 of Regulation No 207/2009 (now recital 24 of Regulation
2017/1001), the legislature considered that there was no justification for protecting an earlier mark, except where the mark had actually been used. In accordance with that recital, Article 57(2) and (3) of Regulation No 207/2009 provides that the rights of a proprietor of an earlier national trade mark are to be declared revoked, on application to EUIPO, if, during the five years preceding the application for a declaration of invalidity, the earlier mark has not been put to genuine use in the Member State in which it is protected in connection with the goods or services in respect of which it is registered and there are no proper reasons for non-use. Furthermore, if, at the date on which the EU trade mark application was published, the earlier national trade mark had been registered for not less than five years, the proprietor of the earlier national trade mark shall furnish proof that, in addition, the conditions were also satisfied at that date.
47      Moreover, in accordance with Rule 22(3) of Regulation No 2868/95, which applies to applications for a declaration of invalidity pursuant to Rule 40(6) of that regulation, proof of use must consist of indications concerning the place, time, extent and nature of the use of the earlier trade mark (see judgment of 2 February 2016, Benelli Q. J. v
OHIM — Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 66 and the case-law cited).
48      The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 10 of Regulation No 207/2009, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 2 February 2016,
MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 67 and the case-law cited).
49      In the interpretation of the notion of genuine use, account must be taken of the fact that the ratio for the requirement that the earlier mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (judgments of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraphs 72 and 74, and of 29 November 2018, Alcohol Countermeasure Systems (International) v EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 90; see also judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 68 and the case-law cited).
50      As is apparent from paragraph 43 of the judgment of 11 March 2003 in Ansul (C‑40/01, EU:C:2003:145), there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected in the relevant territory, be used publicly and externally (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 69 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraphs 36 and 37).
51      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 70 and the case-law cited; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
52      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 71 and the case-law cited).
53      In order to examine, in a particular case, whether an EU trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity or a certain consistency over time of the use of that trade mark or vice versa. In addition, the turnover and the volume of sales of goods marketed under the earlier mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the mark at issue need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned in order to maintain or create a market share for the goods or services protected by the mark (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 72 and the case-law cited).
54      The Court of Justice also added, in paragraph 72 of the judgment of 11 May 2006 in Sunrider v OHIM (C‑416/04 P, EU:C:2006:310) that it is not possible to determine a priori and in the abstract a quantitative threshold for the purposes of determining whether use is genuine or not and, therefore, a de minimis rule, which would not allow EUIPO or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot be laid down. Thus, the Court of Justice has held that, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 73 and the case-law cited).
55      However, the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor of the mark to produce additional evidence to dispel any doubts as to the genuineness of its use (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 74 and case-law cited).
56      The General Court has specified that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark in the market concerned (see judgment of 2 February 2016, MOTOBI B PESARO, T‑171/13, EU:T:2016:54, paragraph 75 and the case-law cited).
57      It is in the light of those considerations that it is appropriate to consider whether the Board of Appeal correctly held, in paragraph 47 of the contested decision, that the documents produced show, as a whole, genuine use of the earlier mark in France for ‘cosmetics for depilatory purposes’.
58      In the first place, as regards the relevant period, it must be held that the Board of Appeal correctly found, in paragraph 18 of the contested decision, that the intervener had to show, under Article 57(2) of Regulation No 207/2009, that the earlier mark had been put to genuine use during the five-year period preceding the date of filing of the application for a declaration of invalidity, that is, on 22 October 2015 — namely, between 22 October 2010 and 21 October 2015. Moreover, since, at the date of publication of the contested mark, namely 31 October 2013, the earlier mark had been registered for more than five years, the intervener also had to present evidence of genuine use of that mark between 31 October 2008 and 30 October 2013. It follows that the relevant period was from 31 October 2008 to 21 October 2015.
59      The applicant therefore erred in claiming that the relevant period ran from 22 October 2010 to 21 October 2015, this error naturally having consequences as regards the evidence which it considers to be outside the relevant period, in particular the invoices in respect of which it appears that 38, and not 6 as alleged by the applicant, had to be taken into consideration for the purpose of proving genuine use, since they were undeniably within the relevant period.
60      In the second place, the applicant considers that the provisions governing evidence must be interpreted cumulatively, so that information which did not relate to the place, time, extent and nature of the use which had been made of the earlier mark should not be taken into account.
61      In this respect, it suffices to recall that, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use, and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing, that rule does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgments of 16 November 2011, Buffalo Milke Automotive Polishing Products
v
OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61, and of 24 May 2012, TMS Trademark-Schutzrechtsverwertungsgesellschaft v
OHIM — Comercial Jacinto Parera (MAD), T‑152/11, not published, EU:T:2012:263, paragraph 33).
62      Moreover, it is settled case-law that it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgments of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 36, and of 24 May 2012, MAD, T‑152/11, not published, EU:T:2012:263, paragraph 34).
63      It is therefore only the consideration of all the evidence submitted to the Board of Appeal that must make it possible to establish proof of that use and each piece of evidence, therefore, does not necessarily have to relate to the place, duration, nature and extent of use.
64      In this respect, it should be recalled that, in the proceedings before the Cancellation Division, the intervener produced the following evidence, listed in paragraph 4 of the contested decision:
–        ‘Exhibit 1: Trade mark Licence agreement (in French) of [20 July 2004] between Thalgo TCH and Per[r]on Rigot;
–        Exhibit 2: Statement by the CEO of Thalgo of [18 July 2016] declaring that Laboratoires EPL Perron Rigot is duly authorised to use the earlier mark;
–        Exhibit 3: Labelling samples in French:
–        Exhibit 4: Invoices from the company Tema Design addressed to Perron Rigot regarding “étiquettes [E]scential Monoï, Lavande et Thé vert”, dated [15 January 2009];
–        Exhibit 5: Labelling sample in French:
–        Exhibit 6: An advertising poster in French with reference
‘expert of intimate hair removal’, [representing] the trade mark as follows:
–        Exhibit 7: 2010 catalogue in French, including in page 13 a reference to waxing products and their prices sold under [the] ‘Dermépil’ trade mark.
–        Exhibit 8: 38 invoices dated between 2009 and 2011 and sent to various customers in France, relating to products sold by Perron Rigot under the trade mark ‘dermépil’ (for instance, DERMEPIL FLEUR D’ORANGER or DERMEPIL MONOI).
The prices have been deleted.
–        Exhibit 9 to 21: Supporting documents showing the activities of the customers’ appearing in the invoices of Exhibit 8, mostly beauty salons and spas.
–        Exhibit 22: Printout of [13 July 2016] from the website www.dermepil.fr showing a number of products sold under the trade mark “Dermépil” represented as follows:
–        Exhibit 23: Printout of [13 July 2016] from the French webpage www.epilation-expert.com and www.1001pharmacies.com, showing the online sale of various “Dermépil” products. The trade mark is represented as Exhibit 22.’
65      Furthermore, other evidence was adduced by the intervener before the Board of Appeal in the appeal against the decision of the Cancellation Division, which the Board of Appeal took into consideration on the grounds that it appeared to be of real relevance and that it supplemented the evidence initially submitted (see paragraphs 22 to 24 of the contested decision).
66      That evidence consists, in particular, of brochures related to ‘dermépil’ goods in December 2014 and March 2015 containing the summary of depilatories bearing the dermépil mark, agreements for packages dated July 2014, an invoice dated July 2015 for the design and production of a logo for the amount of EUR 4 645 and a 2015/2016 catalogue containing many products of the dermépil mark.
67      First, the applicant alleges that only six invoices were produced for the period concerned.
68      However, as is apparent from paragraph 59 above, 38 invoices were submitted, which contain the name of the product associated with the dermépil mark and relate to the relevant period.
69      In this regard, the 38 invoices, addressed to several different persons, which also shows that the mark was used publicly and externally and not only within the company that owns the earlier mark or in a distribution network owned or controlled by it, were issued over a period from 14 January 2009 to 31 October 2011, that is for a period of 33 months, concern several product ranges whose packaging bears the mark concerned and bears numbers that are very widely spaced from each other (40016819 for the invoice of 14 January 2009, 40028073 for that of 28 January 2010, 40040270 for that of 13 January 2011 and 40052512 for that of 31 October 2011), which makes it possible to consider them as having been presented purely for illustration purposes (see, to that effect, judgment of 27 September 2007, La Mer Technology
v
OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 87).
70      Since those invoices are illustrative, they cannot represent actual sales figures for the goods bearing the mark. As is apparent from the file submitted to the Board of Appeal, the invoices are numbered in ascending and chronological order (see, to that effect, judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 88).
71      The sales made, even if they are not high volume, constitute use which, objectively, is such as to create or preserve an outlet for the goods in question and entails a volume of sales which, in relation to the period and frequency of use, is not so low that it may be concluded that the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (judgments of 11 March 2003, Ansul, C‑40/01, EU:T:2003:145, paragraphs 35 and 36, and of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 89).
72      Furthermore, inasmuch as the applicant claims that the invoices relate to ‘dermépil monoï’, ‘dermépil fleur d’oranger’ and ‘dermépil lavande’ and not to the alleged earlier mark dermépil Perron Rigot, it should be stated that it is apparent from the information in the case file lodged with EUIPO that the earlier mark consists of the word element ‘Perron Rigot’ and the word element ‘dermépil’, the latter referring to a range of goods available according to their fragrance or composition.
73      It follows that the invoices undoubtedly relate to the earlier mark, so that the Board of Appeal did not err when it took them into account for the purpose of determining genuine use.
74      Secondly, the applicant claims that the 2010 catalogue does not make it possible to determine the territory to which it applies, as French is also used in Belgium or Senegal.
75      That argument does not stand up to a simple examination of the catalogue that the applicant could clearly carry out, in
so
far as, on page 2 of the catalogue, there is a reference to a ‘toll-free number’ which can only be reached from France and it is also specified that ‘all prices are exclusive of tax, mainland France’, which clearly demonstrates that this catalogue concerns goods offered for sale only in mainland France.
76      Thirdly, contrary to what the applicant claims, the labels contained in the file, which are faithfully reproduced in a brochure dated 2015/2016, are also to be taken into consideration, in so far as they establish how the mark is affixed and distributed on the market.
77      In this respect, it should be noted that that brochure includes an address and a telephone number in France and also mentions the domain name ‘www.dermepil.fr’.
78      Furthermore, the invoice for EUR 4 645 for the design and production of the trade
mark logo is also an element that highlights the nature and extent of use of the earlier mark.
79      In that context, it should be added, in so far as the applicant emphasises the fact that the sales volumes in question were very low, that the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking; nor is it intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraphs 72 and 74, and of 29 November 2018, Alcohol Countermeasure Systems (International)
v
EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 90).
80      Fourthly, the applicant complains that the Board of Appeal did not, in the contested decision, refer in detail and explicitly to the evidence submitted to it, with the result that the reasoning is laconic.
81      In that regard, it should be noted, on the one hand, that the Board of Appeal, as is apparent from paragraphs 64 and 65 above, listed the evidence it took into consideration and, in paragraphs 25 to 33 of the contested decision, examined the place, duration, extent and nature of use of the mark at issue in the light of some of the evidence provided by the intervener in the administrative procedure, specifying, in particular in paragraphs 25, 26 and 29 of that decision, the documents to which it referred. It follows that this complaint must be rejected.
82      On the other hand, assuming that, by this complaint, the applicant calls into question the reasoning of the contested decision, it should be recalled that, according to settled case-law, the obligation to state reasons does not require the Board of Appeal to provide an account that follows exhaustively and one by one all the arguments put forward by the parties before them. It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgments of 16 May 2012, Wohlfahrt v
OHIM — Ferrero (Kindertraum), T‑580/10, not published, EU:T:2012:240, paragraph 28 and the case-law cited, and of 27 February 2018, Hansen Medical
v
EUIPO — Covidien (MAGELLAN), T‑222/16, not published, EU:T:2018:99, paragraph 50 and the case-law cited).
83      In that regard, it must be noted that, in paragraphs 25 to 48 of the contested decision, the Board of Appeal gave exhaustive reasons why the intervener had made serious use of the earlier mark, even if the applicant does not share this analysis on the merits. On the other hand, by specifying the reasons why the intervener had made genuine use of the earlier trade mark, the Board of Appeal allowed the applicant, as is apparent moreover from the application, to know the reasons for the contested decision, to criticise it and to challenge the grounds for it before the General Court (see, to that effect, judgments of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v
EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 63, and of 16 January 2019, Poland
v
Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 78).
84      It follows that the Board of Appeal was not required to provide further reasons for the contested decision, since the latter enabled the applicant to understand the justifications for the measure taken and enabled the General Court to exercise its review of legality.
85      It follows from all of the foregoing that the second and third pleas in law in the action must be rejected.
First plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) thereof
86      In the context of the first plea, the applicant claims, in essence, first, that the analysis of the comparison of the goods in question and of the marks at issue is flawed, so that, contrary to what the Board of Appeal found, there is no likelihood of confusion between those marks.
The similarity of the goods in question
87      The applicant contests the similarity found by the Board of Appeal between certain goods covered by the earlier mark and those covered by the contested mark.
88      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion (judgment of 8 March 2018, Claro Sol Cleaning
v
EUIPO — Solemo (Claro Sol Facility Services desde 1972), T‑159/17, not published, EU:T:2018:123, paragraph 24; see also, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19).
89      Furthermore, it must be borne in mind that, in assessing the similarity between the goods in question, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see order of 8 May 2014, OHIM
v
Sanco, C‑411/13 P, not published, EU:C:2014:315, paragraph 39 and the case-law cited). Other factors may also be taken into account such as the distribution channels of the goods concerned (judgment of 10 February 2015, Boehringer Ingelheim International
v
OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 58).
90      Finally, it has previously been held that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or the provision of those services lies with the same undertaking (see judgment of 24 September 2008, Oakley
v
OHIM — Venticinque (O STORE), T‑116/06, EU:T:2008:399, paragraph 52 and case-law cited; judgment of 24 June 2014, Hut.com
v
OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 24).
91      In the first place, the applicant claims that ‘toiletries’ cannot be regarded as identical to ‘cosmetics for depilatory purposes’. While the purpose of the former is, it is claimed, to keep the body clean, that of the latter is to remove hair in order to beautify the body.
92      It should be recalled that the Board of Appeal found, in paragraph 53 of the contested decision, that ‘toiletries’, as a broader category, were identical to ‘cosmetics for depilatory purposes’.
93      That finding must be upheld.
94      ‘Toiletries’ are not only products intended for washing, but are, more generally, daily body care or beauty products, which therefore necessarily include cosmetics for depilatory purposes, which are also intended to care for or beautify the body.
95      According to the case-law, goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (see judgment of 7 September 2006, Meric v
OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and case-law cited).
96      In the second place, in the applicant’s view, there is no similarity between ‘cleaning preparations’ and ‘cosmetics for depilatory purposes’ and that conclusion applies also as regards ‘quillaia bark for washing’ and ‘perfumery; amber [perfume]; extracts of flowers [perfumes];
Ionone [perfumery]; bases for flower perfumes; potpourris [fragrances]; mint for perfumery; fumigation preparations [perfumes]; perfumes; musk [perfumery];
eau de cologne; lavender water; toilet water; scented water’. The applicant also criticises, following the corrigenda of 16 August and 6 December 2018, the inclusion of ‘jasmine oil’ in the list of goods whose registration was cancelled.
97      As a preliminary remark, it should be noted that, although, as the applicant points out, ‘potpourris [fragrances]’ and ‘fumigation preparations [perfumes]’ are considered, in paragraph 61 of the contested decision, as being similar to an average degree to goods covered by the earlier mark, it is apparent, however, from paragraphs 62 and 63 of that decision that the Board of Appeal considered them to be different from the goods in dispute. Moreover, it follows from paragraph 2 of the corrigendum of 16 August 2018 that paragraph 61 of the contested decision contains an error in so far as those goods were considered to be similar to the goods covered by that mark, even though they are different. Accordingly, in so far as the ‘potpourris [fragrances]’ and ‘fumigation preparations [perfumes]’ do not appear in paragraph 3 of the operative part of the contested decision, either before or after that corrigendum, so that their registration is maintained, the applicant’s argument has no factual basis.
98      As regards the other goods referred to in paragraph 96 above, consideration must be given, first, to ‘cleaning preparations’ and it must be found that, as correctly stated by the Board of Appeal in paragraph 61 of the contested decision, there is an average degree of similarity between those preparations covered by the contested mark and the ‘cosmetics for depilatory purposes’, in the sense that cleaning preparations are necessarily complementary in the depilation process. In addition, those goods share the same distribution channels and are intended for the same public.
99      As regards, secondly, ‘quillaja bark for washing’ and ‘perfumery; amber [perfume]; extracts of flowers [perfumes]; jasmine oil; ionone [perfumery]; bases for flower perfumes; mint for perfumery; perfume; musk [perfumery]; eau de Cologne; lavender water; toilet waters; scent waters’, the Board of Appeal also did not err in finding, in paragraph 61 of the contested decision, as amended by point 2 of the corrigendum of 16 August 2018, that those goods were similar to an average degree to the contested goods, since they can be applied to the body following hair removal and since they were directed at the same public. In addition, cosmetics for depilation may contain fragrances to substitute the odour emitted by the depilation product itself.
100    In the third place, with regard to ‘essential oils’ which, according to the applicant, are different from ‘cosmetics for depilation purposes’ on the ground that they have a different nature and purpose, it must be noted that ‘essential oils’ are generally and naturally associated with ‘cosmetics for depilation purposes’, in that they are generally applied to the body after depilation, so that they are complementary, and that they target the same public. There is therefore a close link between those goods within the meaning of the case-law referred to in paragraph 90 above.
101    Furthermore, those goods can be sold in the same outlets and are aimed at the same category of consumers. In addition, it is not uncommon for the manufacturers of those goods to be the same (see, to that effect, judgment of 27 September 2007, LA MER, T‑418/03, not published, EU:T:2007:299, paragraph 112).
102    In the fourth place, as regards ‘Denture polishes; Preparations for cleaning dentures’, since ‘Dentifrices’ are no longer included in the list of goods whose registration is cancelled, the applicant himself acknowledges that they fall within the category of
‘cosmetics’. It follows that, as it is included in the same category, there is no doubt, in the light of the case-law referred to in paragraph 95 above, that there is a link between the goods in question.
103    Furthermore, it is necessary to uphold the Board of Appeal’s finding, in paragraph 65 of the contested decision, that the contested goods are used to clean, protect or even whiten teeth, have the same general purpose, namely personal care, target the same public and use the same distribution channels.
104    In the fifth place, as regards ‘alum stones [astringents]’, the Board of Appeal found, in paragraph 66 of the contested decision, that they were applied to the skin, in particular to reduce bleeding from minor abrasions, whether due to shaving or depilation. Furthermore, that stone may also be used to serve as an antiseptic or to ease burns caused by shaving. There is therefore a link between the goods in question, so that that finding of the Board of Appeal must be upheld.
105    In the sixth place, as regards products of the type ‘smoothing and polishing stones, preparations, creams and paper which are applied to the skin and hair’, the Board of Appeal correctly found, in paragraph 67 of the contested decision, that those goods belong to the broad category of personal hygiene and were often used at the same time for daily body care, specifically to soften the skin before or after the depilation process.
106    In the seventh place, as regards ‘grinding preparations; pastes for razor strops’, it must be noted that they serve to maintain or to grind razor strops, so that, even if the level of similarity between the contested goods is low, there is in any event a certain similarity resulting from the fact that the public may think that they have the same commercial origin. It is thus without committing any error that the Board of Appeal found, in paragraph 68 of the contested decision, that there was a low degree of similarity between the goods concerned.
107    In the eighth place, as regards all the other goods at issue which were considered by the Board of Appeal to be similar to some degree to the goods covered by the earlier mark, it must be noted that, although the applicant claims that all the other goods of the mark at issue must be considered to be different from the goods covered by the earlier mark, he merely asserts that lack of similarity, without in any way substantiating his arguments in support of that assertion.
108    In that regard, in so far as the applicant seeks to refer to arguments which, he claims, he put forward in the course of the proceedings before EUIPO, it should be recalled that, according to settled case-law, although the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents cannot compensate for the lack of essential elements of the legal arguments, which, under Article 76(d) of the Rules of Procedure, must appear in the application itself. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer. It follows that the application, to the extent that it refers to the written submissions to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (see, to that effect, judgment of 29 November 2018, Alcohol Countermeasure Systems (International)
v
EUIPO, C‑340/17 P, not published, EU:C:2018:965, paragraph 86 and case-law cited; judgment of 8 July 2010, Engelhorn v
OHIM — The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 18 and 19; and order of 18 October 2016, Laboratoire de la mer v
EUIPO — Boehringer Ingelheim Pharma (RESPIMER), T‑109/16, not published, EU:T:2016:627, paragraph 28).
109    That argument must therefore be rejected.
110    It follows from all of the foregoing that the Board of Appeal did not err in comparing the goods at issue.
Similarity of the conflicting trade marks
111    As regards the comparison of the marks at issue, the applicant criticises the reasoning of the Board of Appeal in that, primarily, it was based on an incorrect premiss as regards determining the distinctive and dominant character of those marks. In the applicant’s view, by ignoring the descriptive nature of the word elements ‘dermépil’ and ‘dermæpil’ of the marks at issue and by failing, on the contrary, to emphasise the other distinctive elements in those marks, the Board of Appeal wrongly concluded that there was a similarity between them.
112    Article 53 of Regulation No 207/2009 provides, inter alia:
‘1.      [An EU] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a)      where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled;
…’
113    In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
114    According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 24; see also, by analogy, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19).
115    Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 25; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 22, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 20).
116    That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa The interdependence of those factors is expressly referred to in recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 26 and the case-law cited).
117    Furthermore, the global assessment must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 8(1)(b) of Regulation No 207/2009 ‘… there exists a likelihood of confusion on the part of the public …’ shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 27; see also, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 21).
118    For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 28 and the case-law cited; see also, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
119    The Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.
120    In that regard, the marks to be compared are the following:
Earlier mark
Contested mark
121    The earlier mark is a French trade mark, with the result that, as is apparent from paragraph 70 of the contested decision, the relevant public is the French public. In view of the nature of the goods concerned, namely cosmetics for depilatory purposes, it must be found that the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect, with the result that the relevant public’s level of attention must be qualified as average (see, to that effect, judgments of 14 April 2011, Lancôme
v
OHIM — Focus Magazin Verlag (ACNO FOCUS), T‑466/08, EU:T:2011:182, paragraph 49 and the case-law cited, and of 3 June 2015, Giovanni Cosmetics
v
OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraph 25).
122    As regards the similarity of the marks at issue, it must be borne in mind that, as has already been stated in paragraph 117 above, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements.
123    In particular, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 33; see also, to that effect, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43).
124    In the present case, it is therefore necessary, before examining whether there is any visual, phonetic and conceptual similarity between the marks at issue, to determine the distinctive and dominant elements of those signs.
–       The distinctive and dominant elements of the marks at issue
125    According to the case-law, in assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 36 and the case-law cited).
126    Furthermore, where a trade mark is composed of both word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name than by describing the figurative element of the mark (judgments of 31 January 2012, LA VICTORIA DE MEXICO, T‑205/10, not published, EU:T:2012:36, paragraph 38, and of 16 January 2014, Message Management
v
OHIM — Absacker (ABSACKER of Germany), T‑304/12, not published, EU:T:2014:5, paragraph 31). However, this is not the case when the figurative element ranks equally with the central element (see, to that effect, judgment of 24 November 2005, Simonds Farsons Cisk v
OHIM — Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 47).
127    In the first place, with regard to the earlier mark, it must be pointed out that that composite mark consists of two word elements, namely ‘dermépil’ in lower case letters, but in bold and in a very legible font, and ‘perron rigot’ in lower case letters, except for the first letters of each word ‘p’ and ‘r’, in italics and in a font that is difficult to read. Those elements are written in black letters on a light grey square background with the silhouette of a woman depicted in light grey.
128    As was correctly pointed out by the Board of Appeal in paragraph 74 of the contested decision, the silhouette of a woman is not particularly striking for depilation products, especially as the word element ‘dermépil’ is superimposed on that device, for which it has a background function and is purely decorative. The other word element ‘perron rigot’, because of its size, is barely visible.
129    It must therefore be noted that the word element ‘dermépil’ of the mark applied for is such as to give it a distinctive and dominant character (see, to that effect, judgment of 8 March 2018, Claro Sol Facility Services desde 1972, T‑159/17, not published, EU:T:2018:123, paragraph 38 and the case-law cited).
130    In the second place, with regard to the contested mark, it consists of three elements. The first element, which appears in the first position and has an independent role, is a figurative element that resembles the schematic representation of a rose. The second element, which appears in capital letters and in bold and in a very large font, is the word element ‘dermæpil’. The third element, positioned directly below, in block capitals but in a very fine font, is the word element ‘sugar epil system’, which is not immediately legible.
131    In view of its place and significant presence within the composite mark, the figurative element, which appears in first position, is effectively co-dominant with the word element ‘dermæpil’ in the overall impression, as the Board of Appeal rightly found in paragraph 75 of the contested decision.
132    However, that finding must be balanced by the fact that it cannot be disputed that many care or beauty products refer to flowers. Moreover, it must be noted that this figurative element will not be pronounced phonetically, in so far as the average consumer will more readily refer to the goods in question by quoting the name rather than by describing the figurative element of the mark (see, to that effect, judgment of 29 June 2017, Mr. Kebab
v
EUIPO — Mister Kebap (Mr. KEBAB), T‑448/16, not published, EU:T:2017:459, paragraph 26 and the case-law cited).
133    Furthermore, the word element ‘sugar epil system’, due to the size of its characteristics and its position, is difficult to read. Furthermore, even if the relevant public is the French public, the words ‘sugar’ and ‘system’ because they are basic English words, will certainly be understood by that public, especially since those words are associated with the word ‘epil’, which the French public will perceive as the root of the word ‘épilation’ (depilation) or the verb ‘épiler’ (depilate).
134    It follows that the two marks at issue have in common as a distinctive and dominant element a word element which is virtually identical, the only difference arising, almost in the middle of those marks, from the presence of the letter ‘æ’ in capital letters in the contested mark and the letter ‘é’ in lowercase letters in the earlier mark.
135    The applicant criticises that analysis on the ground that the suffixes ‘derm’ and ‘epil’, comprising the word element ‘dermépil’, should have been considered by the Board of Appeal as being descriptive, with the result that, in accordance with the case-law according to which a descriptive element should be given less importance in the context of the overall impression, to the extent that the target consumer does not generally consider a descriptive element as the distinctive and dominant element in the overall impression, with the result that the element ‘dermépil’ could not be regarded as distinctive and dominant.
136    In this regard, it is common ground that, as the applicant points out, the relevant consumer generally does not consider a descriptive element forming part of a complex trade mark as a distinctive and dominant element
(see, to that effect, judgments of 23 October 2002, Matratzen Concord
v
OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 41, and of 27 February 2015, Spa Monopole
v
OHIM — Olivar Del Desierto (OLEOSPA), T‑377/12, not published, EU:T:2015:121, paragraph 27).
137    However, there may be special circumstances that justify the dominance of a descriptive element. This is the case, in particular, because of its position in the sign or its size, so that it may make an impression on consumers and be remembered by them, or the fact that the respective word elements occupy a central position in the marks at issue and dominate their overall image (see judgment of 29 June 2017, Mr. KEBAB, T‑448/16, not published, EU:C:2017:459, paragraph 28 and the case-law cited). That is indeed the case here, as is apparent from the analysis of the marks at issue made in paragraphs 128 to 135 above.
138    It follows from the foregoing that the judgment of 21 February 2013, Laboratoire Bioderma v
OHIM — Cabinet Continental (BIODERMA) (T‑427/11, not published, EU:T:2013:92), relied on by the applicant, which concerned proceedings for the declaration of invalidity of an EU mark based on an absolute ground for refusal, is not relevant in the context of cancellation proceedings based on a relative ground for refusal. This is necessarily the case with regard to the judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB) (T‑19/04, EU:T:2005:247), also relied on by the applicant, which concerned a registration procedure based on an absolute ground for refusal.
139    It should also be recalled that, in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of a national mark relied on in support of an opposition to the registration of a Community trade mark (judgments of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47, and of 16 January 2014,
ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 52).
140    It follows that that sign cannot be found to be generic, descriptive or devoid of any distinctive character, without calling into question the validity of the earlier mark in proceedings for the declaration of invalidity of an EU mark, which would give rise to an infringement of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraphs 51 and 52, and of 16 January 2014, ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 53).
141    It follows that, since the mark has been duly registered in a Member State and no national proceedings for a declaration of invalidity of the earlier trade mark have been brought resulting in its invalidity on the ground of its alleged descriptive character, the earlier trade mark must be regarded as having distinctive character.
142    In those circumstances, it must be acknowledged that the earlier mark, including ‘cosmetics for depilation purposes’ has a minimum degree of distinctiveness.
143    Moreover, it should be recalled that, even if the earlier mark has a weak distinctive character, if the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one element among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services concerned (see judgment of 16 January 2014, ABSACKER of Germany, T‑304/12, not published, EU:T:2014:5, paragraph 55 and the case-law cited).
144    It is therefore in the light of those considerations that it is necessary to examine the visual, phonetic and conceptual comparison of the marks at issue.
–       Visual comparison of the marks at issue
145    Visually, the Board of Appeal concluded, in paragraph 80 of the contested decision, that the marks at issue were similar to an average degree, due to the presence of the element considered distinctive and dominant, namely ‘dermépil’ in the earlier mark and ‘dermæpil’ in the contested mark, as the other elements do not compensate for the overall impression of visual similarity created by the almost identical element.
146    In that regard, it is clear from settled case-law that the fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43, and of 10 December 2008, MIP Metro
v
OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 42).
147    Furthermore, it must be borne in mind that the fact that the marks at issue include similar word elements does not, by itself, make it possible to conclude that those marks are visually similar. The presence in the marks of figurative elements that are set out in a specific way can have the effect that the overall impression conveyed by each sign is different (judgments of 24 November 2005, KINJI by SPA, T‑3/04, EU:T:2005:418, paragraph 48; of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 43; and of 7 November 2017, Frame v EUIPO — Bianca-Moden (BiancalunA), T‑628/15, not published, EU:T:2017:781, paragraph 55).
148    However, while, in the present case, the presence of different word and figurative elements in the marks at issue which are juxtaposed with the dominant word element will necessarily be perceived as elements differentiating the two marks, they are not sufficient to compensate for the presence of such an almost identical word element in those marks. Thus, the presence of additional figurative and word elements makes it possible to establish, as the Board of Appeal rightly found in paragraph 80 of the contested decision, that the marks at issue are similar to an average degree.
149    It follows that the Board of Appeal did not err when, with regard to the visual comparison of the trade marks at issue, it found that there was an average degree of similarity between them.
–       Phonetic comparison of the marks at issue
150    As the Board of Appeal noted in paragraph 83 of the contested decision, the marks at issue are phonetically identical, since only the distinctive and dominant word element of those marks, namely ‘dermépil’ and ‘dermæpil’ respectively, will be pronounced. It must be noted that the relevant consumers will not pronounce the other word elements of those marks, either primarily to economise on words because they take time to pronounce and are easily separable from the dominant element of the marks at issue, or, secondarily, because of a lack of legibility (see, to that effect, judgment of 18 September 2012, Scandic Distilleries
v
OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 48 and the case-law cited).
151    Thus, the pronunciation of the word elements ‘dermépil’ or ‘dermæpil’ is identical, in so far as, in French, the vowels ‘æ’ in the contested mark are pronounced in the same way as the letter ‘é’ in the earlier mark.
152    As regards the figurative elements in the marks at issue, they are in any event of no importance in the context of the phonetic comparison, since only the word elements are pronounced (see, to that effect, judgment of 7 February 2013, AMC-Representações Têxteis v
OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, not published, EU:T:2013:68, paragraph 39).
153    It follows that the marks at issue are phonetically identical.
–       Conceptual comparison of the marks at issue
154    The Board of Appeal found, in paragraph 84 of the contested decision, that, conceptually, even though the terms ‘dermépil’ and ‘dermæpil’ shared the notions of ‘derm/a’ and ‘epil’, neither of those terms as a whole had any meaning, so that the conceptual comparison remained neutral.
155    However, as is apparent from paragraph 89 of the contested decision, the marks at issue are conceptually very similar for that part of the French public which perceives the word elements ‘dermépil’ and ‘dermæpil’ as conveying the same meaning.
–       The existence of a likelihood of confusion
156    It should be noted that, according to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 4(1)(b) of the Directive, according to which ‘... there exists a likelihood of confusion on the part of the public ...’, shows that the perception of the marks by the average consumer of the type of goods or service in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23 et seq.).
157    In the present case, with regard to the degree of similarity of the goods, there is a likelihood of confusion, including with regard to products that are similar to a low degree, in so far as they are phonetically identical, visually similar to an average degree and conceptually highly similar for the part of the French public which perceives the word elements ‘dermépil’ and ‘dermæpil’ as conveying the same meaning and conceptually neutral for the other part of the French public.
158    As was correctly pointed out by the Board of Appeal in paragraph 91 of the contested decision, having regard, first, to the imperfect recollection which the relevant public may have of the marks at issue after the purchase transaction and, secondly, the interdependence of the various factors, there is a likelihood of confusion since the relevant public, despite having a level of attentiveness which is at least average, could be led to believe that the goods in question come from the same undertaking or from economically
linked undertakings.
159    It follows that the Board of Appeal rightly found that there was a likelihood of confusion between the marks at issue, so that the first plea in law must be rejected and the action must be dismissed in its entirety.
Costs
160    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Mr Radoslaw Pielczyk to pay the costs.
Collins
Barents
Passer
Delivered in open court in Luxembourg on 13 June 2019.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.