JUDGMENT OF THE GENERAL COURT (Third Chamber)
15 September 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark Le-Vel – Earlier national word mark LEVEL – Relative ground for refusal – No likelihood of confusion – No similarity of the goods and services – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑331/20,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by S. Correa Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Vuijst and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Le-Vel Brands, LLC, established in Frisco, Texas (United States),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 March 2020 (Case R 2113/2019‑4), relating to opposition proceedings between Laboratorios Ern and Le-Vel Brands,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and G. De Baere (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 May 2020,
having regard to the response lodged at the Court Registry on 10 November 2020,
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 16 March 2016, Le-Vel Brands, LLC, 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 word sign Le-Vel.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 3: ‘Polishing, scouring and abrasive preparations; perfumery; flavourings for beverages [essential oils]; food flavourings prepared from essential oils; fragrances for personal use; perfume oils for the manufacture of cosmetic preparations’;
–        Class 35: ‘Advertising; business management; business administration; office functions; retail and online retail store services connected with the sale of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, aromatherapy preparations, essential oils for aromatherapy use, essential oils for soothing the nerves, flavourings for beverages [essential oils], food flavourings prepared from essential oils, natural oils for cosmetic purposes; retail and online retail store services connected with the sale of scented oils used to produce aromas when heated, perfume oils for the manufacture of cosmetic preparations, aromatherapy creams, aromatherapy lotions, cosmetic preparations for the care of mouth and teeth, breath fresheners, not for medical use, mouth sprays, not for medical uses, strips (Breath freshening -), body sprays [non-medicated], fragrances for personal use, scented body lotions and creams, beauty care cosmetics; retail and online retail store services connected with the sale of beauty care preparations, cosmetics for use on the skin, cosmetic nail care preparations, foot scrubs, hair care preparations, washing preparations for personal use, collagen preparations for cosmetic application, serums for cosmetic purposes’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 91/2016 of 19 May 2016.
5        On 17 August 2016, the applicant, Laboratorios Ern, SA, filed a notice of opposition, pursuant to Article 41 and Article 8(1)(b) of Regulation No 207/2009 (now Article 46 and Article 8(1)(b) of Regulation 2017/1001), to registration of the mark applied for in respect of all the goods and services referred to in the application for registration.
6        The opposition was based on the Spanish word mark LEVEL, filed on 4 October 2013 and registered on 27 March 2014 under number 03092831 designating goods in Class 5 of the Nice Agreement and corresponding to the following description: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides’.
7        By decision of 24 July 2019, the Opposition Division upheld the opposition for some of the goods and services in respect of which registration was sought and rejected the opposition in respect of the goods and services referred to in paragraph 3 above.
8        On 20 September 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation 2017/1001, against the decision of the Opposition Division in so far as it had rejected the opposition.
9        By decision of 20 March 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal, finding that the Opposition Division had acted correctly in rejecting the opposition in respect of the goods and services referred to in paragraph 3 above. To that end, it observed that the goods and services concerned were different, with the result that there could not be a likelihood of confusion on the part of the relevant public, irrespective of the degree of similarity of the signs.
Forms of order sought
10      The applicant claims, in substance, that the Court should:
–        annul the contested decision and refuse registration of the mark applied for;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      In view of the date on which the application for registration at issue was filed, namely 16 March 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12; of 16 July 2020, ACTC v EUIPO, C‑714/18 P, EU:C:2020:573, paragraph 2 and the case-law cited; and of 24 March 2021, Novomatic v EUIPO – adp Gauselmann (Power Stars), T‑588/19, not published, EU:T:2021:157, paragraph 20). Consequently, so far as the substantive rules are concerned, the references to Article 8(1)(b) of Regulation 2017/1001 made by the applicant in its written submissions must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘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.
15      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. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited; judgments of 15 March 2018, Marriott Worldwide v EUIPO – Graf (Representation of a winged bull), T‑151/17, not published, EU:T:2018:144, paragraph 30, and of 24 February 2021, Sonova v EUIPO – Digitmarket (B-Direct), T‑61/20, not published, EU:T:2021:101, paragraph 30).
16      For the purpose of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited; judgment of 24 February 2021, B-Direct, T‑61/20, not published, EU:T:2021:101, paragraph 31).
17      It must be noted that the applicant disputes the Board of Appeal’s findings that, first, the goods and services in question are not similar and, second, there is no likelihood of confusion.
Comparison of the goods and services
18      According to settled case-law, in order to assess the similarity of the goods or services at issue, all the relevant factors relating to those goods or services 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. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited; judgments of 4 October 2018, Frinsa del Noroeste v EUIPO – Alimentos Friorizados (Alfrisa), T‑820/17, not published, EU:T:2018:647, paragraph 33, and of 24 February 2021, B-Direct, T‑61/20, not published, EU:T:2021:101, paragraph 38).
19      Goods or services which are complementary are those where 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 provision of those services lies with the same undertaking (judgments of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57; of 14 September 2011, Olive Line International v OHIM – Knopf (O‑live), T‑485/07, not published, EU:T:2011:467, paragraph 72; and of 12 March 2020, Sumol + Compal Marcas v EUIPO – Heretat Mont-Rubi (SUM011), T‑296/19, not published, EU:T:2020:93, paragraph 41).
20      It is in the light of those principles that it is necessary to ascertain whether the Board of Appeal was entitled to find that the goods and services in question were different.
The goods in Class 3 covered by the mark applied for
–       ‘Perfumery’, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’
21      In paragraph 15 of the contested decision, the Board of Appeal found that the ‘perfumery’, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 covered by the mark applied for were different from the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark. It observed that the purpose of the former was to impart a pleasant scent to the body, whereas the latter were intended for medical treatment or healthcare. It added that those goods had different distribution channels, that is to say, for the former, drugstores or supermarkets and, for the latter, pharmacies. Moreover, those goods did not originate from the same producers, were not targeted towards the same consumers and were not in competition with, or complementary to, each other.
22      The applicant claims, first of all, that the ‘perfumery’, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ covered by the mark applied for are not intended solely to impart a pleasant scent to consumers. Many perfumes and perfumed oils, it argues, are used as alternative therapies to treat, for example, insomnia, anxiety and headaches. Next, certain perfumes or perfumed oils that protect the skin are sold exclusively in pharmacies, as allegedly shown by the document in Annex 8 to the application. Last, those goods and the pharmaceutical preparations in Class 5 covered by the earlier mark could be manufactured by the same companies. In that regard, the applicant claims that it is established that companies that specialise in body protection and care manufacture both medical and non-medical goods.
23      EUIPO disputes the applicant’s arguments.
24      In the first place, regarding the intended purpose of the goods, the Board of Appeal correctly noted that ‘perfumery’, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ have a different purpose from that of the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark.
25      In contrast to pharmaceutical and sanitary preparations that are intended for medical treatment or healthcare, the ‘perfumery’ goods covered by the mark applied for are beauty and personal care products. They are generally used to care for and beautify the human body by imparting to it a pleasant scent or appearance (see, to that effect, judgments of 16 November 2006, Jabones Pardo v OHIM – Quimi Romar (YUKI), T‑278/04, not published, EU:T:2006:351, paragraph 56, and of 5 October 2020, Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraph 41). The same is true, a fortiori, of ‘fragrances for personal use’, intended to impart a pleasant scent to one’s own body. As for ‘perfume oils for the manufacture of cosmetic preparations’, it must be noted that these can be used to give a pleasant scent to cosmetics.
26      In so far as the applicant suggests that the ‘perfumery’ goods, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 and covered by the mark applied for can be used as alternative therapies, it should be noted, as EUIPO observes, that the list of goods covered by that mark does not specify at any point that such goods are intended for medical use. On the contrary, that mark covers perfumes specified as being ‘for personal use’ and perfume oils specified as being used ‘for the manufacture of cosmetic preparations’.
27      In that regard, it should be borne in mind that, in the context of opposition proceedings, EUIPO may only take into account the list of goods or services as it stands in the application for the mark concerned, subject only to any restrictions of that list, in accordance with Article 43(1) of Regulation No 207/2009 (see, to that effect, judgments of 20 April 2018, Mitrakos v EUIPO – Belasco Baquedano (YAMAS), T‑15/17, not published, EU:T:2018:198, paragraph 30, and of 19 September 2019, Unifarco v EUIPO – GD Tecnologie Interdisciplinari Farmaceutiche (TRICOPID), T‑359/18, not published, EU:T:2019:626, paragraph 92).
28      Therefore, the applicant cannot usefully rely on the existence of perfume oils and perfumes used in alternative therapies or in aromatherapy, those being irrelevant in view of the specification of the goods covered by the mark applied for. Moreover, such use of those goods has not been demonstrated to the requisite legal standard.
29      In the second place, regarding the distribution channels of the goods, the Board of Appeal was fully entitled to find that the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark tended to be sold in pharmacies, given that those goods have a medical use, whereas the ‘perfumery’ goods, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 and covered by the mark applied for were sold in drugstores or supermarkets.
30      In so far as the applicant claims that some specific perfumes that protect the skin are sold only in pharmacies, it must be noted that that argument is based on a document included as Annex 8 to the application, which was produced for the first time before the General Court. However, actions before the General Court are intended to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. Therefore, it is not the Court’s function to review the facts in the light of documents produced for the first time before it (judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19; of 29 September 2011, Telefónica O2 Germany v OHIM – Loopia (LOOPIA), T‑150/10, not published, EU:T:2011:552, paragraph 15; and of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 69). Accordingly, Annex 8 to the application must be declared inadmissible, as the relevant document was not produced by the applicant in the administrative proceedings.
31      Moreover, even if certain specific perfumes were sold in pharmacies and the distribution channels of ‘perfumery’ goods and ‘fragrances for personal use’ were to overlap in part with those of certain goods covered by the earlier mark, something which the applicant has not sufficiently substantiated, this would not lead to a finding that they are similar.
32      As for ‘perfume oils for the manufacture of cosmetic preparations’, it cannot be found that they are generally sold in pharmacies in the same way as the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark, which the applicant does not, moreover, claim.
33      In the third place, regarding the usual origin of the goods, the Board of Appeal did not err in finding that the ‘perfumery’ goods, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 covered by the mark applied for and the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark do not come from the same producers. The applicant’s claim that manufacturers of body care products also manufacture medical products, assuming it to be established, is irrelevant, given that the abovementioned goods covered by the mark applied for are not ‘body care products’. In any event, the applicant acknowledges that pharmaceutical preparations are usually manufactured by the pharmaceutical industry and it has not claimed that the abovementioned goods covered by the mark applied for are usually manufactured by that same industry.
34      In the fourth place, the applicant does not call into question the Board of Appeal’s finding that the ‘perfumery’ goods, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 covered by the mark applied for and the pharmaceutical and sanitary preparations in Class 5 covered by the earlier mark are not in competition with, or complementary to, each other.
35      It follows that the Board of Appeal was fully entitled to find that there was no similarity between, on the one hand, the ‘perfumery’, ‘fragrances for personal use’ and ‘perfume oils for the manufacture of cosmetic preparations’ in Class 3 covered by the mark applied for and, on the other hand, the pharmaceutical and sanitary preparations intended for medical treatment or healthcare in Class 5 covered by the earlier mark.
–       The ‘polishing, scouring and abrasive preparations’
36      In paragraph 14 of the contested decision, the Board of Appeal found that there was no similarity between the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’. It observed that those goods have different purposes and that, as a result, they do not have the same distribution channels or manufacturers and are not in competition with, or complementary to, each other.
37      The applicant argues that the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’, have the same nature and intended purpose, in so far as they consist of chemical or biological substances used for cleaning and removing undesired elements. In addition, the applicant claims that they are sold in the same sections of department stores and may originate from the same companies.
38      EUIPO disputes the applicant’s arguments.
39      In the first place, regarding the nature and intended purpose of the goods, the Board of Appeal was fully entitled to find that the ‘preparations for destroying vermin; fungicides, herbicides’ in Class 5 protected by the earlier mark were chemicals used in, inter alia, agriculture, to destroy vermin on plants, fungus or unwanted vegetation, whereas the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for are considered to be goods for embellishment or cleaning purposes, for polishing, scouring and rubbing surfaces.
40      The applicant has not succeeded in calling into question that assessment. First, it errs in asserting that both the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the ‘preparations for destroying vermin; fungicides, herbicides’ in Class 5 protected by the earlier mark are used to clean and eliminate dirt and grease marks. The first goods alone are used for that purpose.
41      Second, contrary to what the applicant claims and as noted correctly by the Board of Appeal, the mere fact that the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’, all consist of chemical or biological substances is not sufficient to establish relevant similarity.
42      In the second place, regarding the distribution channels of the goods, the Board of Appeal did not err in finding that the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’, did not have the same distribution channels. In that regard, aside from the fact that the applicant does not in any way support its claim that those goods are sold in the same sections of department stores, it must be stated that those goods are generally sold in different sections, intended, on the one hand, for cleaning products and, on the other hand, for gardening products and products for maintaining outdoor spaces.
43      In the third place, regarding the usual origin of the goods, the applicant has not been able to establish that the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’, are usually manufactured by the same companies. It is sufficient to note that its claim that those goods originate ‘in the marketing phase’ of the same companies is not sufficiently understandable. In addition, the applicant itself acknowledges that this is only probable.
44      In the fourth place, the applicant does not call into question the Board of Appeal’s finding that the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’, are not in competition with, or complementary to, each other.
45      It follows that the Board of Appeal was fully entitled to find that there was no similarity between, on the one hand, the ‘polishing, scouring and abrasive preparations’ in Class 3 covered by the mark applied for and, on the other hand, the goods in Class 5 protected by the earlier mark, in particular the ‘preparations for destroying vermin; fungicides, herbicides’.
–       The ‘flavourings for beverages [essential oils]; food flavourings prepared from essential oils’
46      In paragraph 16 of the contested decision, the Board of Appeal held that the ‘flavourings for beverages [essential oils]; food flavourings prepared from essential oils’ in Class 3 and covered by the mark applied for were dissimilar to the ‘dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals’ in Class 5 and covered by the earlier mark. It found that the nature, intended purpose and consumers of those goods were different and that the goods were not complementary to, or in competition with, each other.
47      According to the applicant, it is apparent from a decision of the Opposition Division of 18 January 2017 that ‘flavourings for beverages [essential oils]; food flavourings prepared from essential oils’ have a low degree of similarity with pharmaceutical substances and preparations.
48      EUIPO disputes the applicant’s argument.
49      It must be stated that the applicant cannot call into question the Board of Appeal’s finding set out in paragraph 46 above by merely relying on a decision of the Opposition Division of EUIPO.
50      It is important to note that the applicant merely referred to a decision of the Opposition Division of EUIPO and that the Board of Appeal cannot, in any event, be bound by a decision of a lower adjudicating body (judgments of 13 December 2016, Apax Partners v EUIPO – Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 38; of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 62; and of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear), T‑349/19, not published, EU:T:2020:488, paragraph 86).
51      The applicant has therefore not succeeded in calling into question the Board of Appeal’s assessment that there is no similarity between the ‘flavourings for beverages [essential oils]; food flavourings prepared from essential oils’ in Class 3 covered by the mark applied for and the ‘dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals’ in Class 5 covered by the earlier mark.
The services in Class 35 covered by the mark applied for
52      In paragraphs 17 and 18 of the contested decision, the Board of Appeal found that the services in Class 35 covered by the mark applied for, that is to say, the ‘retail and online retail store services’ relating to goods in Class 3 and the ‘advertising; business management; business administration; office functions’ services, were different from the goods in Class 5 covered by the earlier mark.
53      The applicant essentially submits that, irrespective of the fact that the nature of services and goods is, by definition, different the companies manufacturing goods such as those in Class 3 can also provide retail services for those goods, so that there is a connection between the services in Class 35 covered by the mark applied for and the goods in Class 5 covered by the earlier mark.
54      EUIPO disputes the applicant’s arguments.
55      It must be noted that the applicant’s reasoning is confused in that it refers to the manufacture and retail sale of goods in Class 3 without in any way referring to the goods in Class 5 protected by the earlier mark and serving as a basis for the comparison.
56      In that regard, it must be stated that the Board of Appeal correctly compared the retail and online retail services in Class 35 covered by the mark applied for with the goods in Class 5 protected by the earlier mark. More specifically, it verified whether those goods and services were complementary for the purposes of the case-law cited in paragraph 19 above. To that end, it observed that the retail and online retail services related to goods in Class 3. However, none of those goods was similar or identical to the goods in Class 5 covered by the earlier mark. It therefore found that there was no close relationship between the services in Class 35 covered by the mark applied for and the goods in Class 5 protected by the earlier mark such as to establish that those goods and services were complementary.
57      Moreover, the applicant did not raise any arguments to dispute the Board of Appeal’s assessment relating to the ‘advertising; business management; business administration; office functions’ services in Class 35 covered by the mark applied for.
58      Thus, the Board of Appeal did not err in finding that the services in Class 35 covered by the mark applied for differed from the goods in Class 5 covered by the earlier mark.
The likelihood of confusion
59      The applicant submits that, having regard to the high degree of visual similarity of the signs and to the fact that they are identical phonetically, as acknowledged by EUIPO, and having regard to the fact that the conflicting goods and services are ‘closely related’, consumers will confuse the conflicting marks or at least believe that they come from the same undertaking or from economically linked undertakings.
60      EUIPO disputes those arguments.
61      It follows from paragraphs 18 to 58 above that, contrary to what the applicant claims, the Board of Appeal was fully entitled to find that the goods and services in question were different.
62      According to the case-law recalled in paragraph 16 above, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative.
63      The Board of Appeal therefore correctly found, in paragraph 19 of the contested decision, that, by reason of the lack of similarity between the goods and services in question and, consequently, of the fact that one of the cumulative conditions necessary for the application of Article 8(1)(b) of Regulation No 207/2009 was not met, a likelihood of confusion on the part of the relevant public was ruled out. In that regard, as observed by that Board of Appeal, any similarity of the signs in question does not influence that finding.
64      Therefore, the applicant’s argument that the Board of Appeal erred in its assessment of the likelihood of confusion of the conflicting marks must be rejected.
65      The applicant’s single plea must therefore be rejected and, as a result, the action must be dismissed, without there being any need to rule on the admissibility of the second part of the applicant’s first head of claim, disputed by EUIPO.
Costs
66      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laboratorios Ern, SA, to pay the costs.
Collins
Kreuschitz
De Baere
Delivered in open court in Luxembourg on 15 September 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.