JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
30 November 2022 (*)
(EU trade mark – Invalidity proceedings – EU word mark VSL3TOTAL – Earlier EU word mark VSL#3 – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001))
In Case T‑678/21,
Mendes SA, established in Lugano (Switzerland), represented by M. Cavattoni, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Actial Farmaceutica Srl, established in Rome (Italy), represented by M. Mostardini, F. Mellucci and F. Rombolà, lawyers,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberations, of M. J. Costeira, President, M. Kancheva and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Mendes SA, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 August 2021 (Case R 1568/2020-2) (‘the contested decision’).
Background to the dispute
2        On 20 June 2017, the intervener, Actial Farmaceutica Srl, filed an application with EUIPO for a declaration of invalidity of the EU trade mark that had been registered following an application filed by the applicant on 29 March 2013 for the word sign VSL3TOTAL.
3        The goods covered by the contested mark and in respect of which a declaration of invalidity was sought were in Class 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 corresponded, after a partial surrender on 8 January 2019, to the following description: ‘Compositions based on lactic bacteria for use as drugs and/or food/dietary supplements’.
4        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 53(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). The application for a declaration of invalidity was based on the EU word mark VSL#3, registered on 5 July 2001 under No 1437789 for goods in Class 5 and corresponding to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; nutraceuticals; nutritional supplements’.
5        On 26 May 2020, the Cancellation Division granted the application for a declaration of invalidity.
6        On 28 July 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was a likelihood of confusion, including a likelihood of association, between the marks at issue, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Determination of the applicable regulation ratione temporis
10      Given the date on which the application for registration in question was filed, namely 29 March 2013, which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
11      Consequently, in the present case, as regards the substantive rules, the references made by the parties in their written pleadings to Article 8(1)(b) and to Article 60(1)(a) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009, the terms of which are identical.
Substance
12      The applicant raises a single plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation. In support of that plea, it relies on four complaints, alleging, first, incorrect assessment as to the definition of the relevant public and the level of attention of that public, second, the weak distinctiveness of the earlier mark, third, that the goods at issue are not identical and, fourth, that there is no likelihood of confusion.
13      Under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, an EU trade mark is to be declared invalid, on application by the proprietor of an earlier trade mark, if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
14      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity of the signs and of the similarity 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).
15      For the purposes of applying Article 8(1)(b) of Regulation No 209/2007, a likelihood of confusion presupposes both that the two marks 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).
16      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
17      The present action must be examined in the light of the abovementioned principles.
The relevant public and its level of attention
18      In the contested decision, the Board of Appeal found, in essence, that the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 was the European Union and that the relevant public consisted both of end consumers in general and of professionals in the pharmaceutical and medical sectors. Next, it held that the relevant public had a level of attention that was likely to be higher than average.
19      The applicant disputes, in essence, the Board of Appeal’s determination of the relevant public and, in particular, the taking into account of criteria relating to the average consumer for the purposes of the comparison of the marks at issue, whereas the Board of Appeal should have considered a specialist or informed public. The applicant also considers that the relevant public’s level of attention must not be regarded as higher than average but as high for the goods at issue.
20      EUIPO and the intervener dispute those arguments.
21      In that regard, it should be recalled that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. 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 13 February 2008, Sanofi-Aventis v OHIM – GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 21 and the case-law cited).
22      Furthermore, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the contested mark (judgments of 24 May 2011, ancotel v OHIM – Acotel (ancotel), T‑408/09, not published, EU:T:2011:241, paragraph 38, and of 26 March 2020, Alcar Aktiebolag v EUIPO – Alcar Holding (alcar.se), T‑77/19, not published, EU:T:2020:126, paragraph 28).
23      In the event that the goods covered by the two marks at issue are intended for a public comprising both the general public and professionals, the part of the public displaying the lowest level of attention must be taken into consideration, as it will be more prone to being confused (see, to that effect, judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 28 and 29 and the case-law cited).
24      As a preliminary point, it must be observed that the applicant claims that the Board of Appeal made an error of assessment in taking into account the ‘average consumer’ of the goods at issue, whereas the relevant public displays a high level of attention. The applicant seems in that regard to confuse the term ‘average consumer’ with the legal concept of the end consumer with an average level of attention. It must be stated that the term ‘average consumer’ is a legal concept that is used to designate the relevant public and not to designate the end consumer or the general public with an average level of attention.
25      In the present case, as the Board of Appeal rightly pointed out in the contested decision, where the goods at issue are pharmaceutical products or substances for medical use, the relevant public consists both of medical professionals, such as the doctors who prescribe the goods in question and the pharmacists who sell them, and of end consumers of those goods (see, to that effect, judgment of 13 February 2008, ATURION, T‑146/06, not published, EU:T:2008:33, paragraph 23 and the case-law cited).
26      Next, the applicant submits that consumers’ attentiveness in respect of the goods at issue is ‘high’ and that the Board of Appeal made an error of assessment in finding, in paragraph 28 of the contested decision, that the relevant public’s level of attention was likely to be ‘higher than average’.
27      In the present case, given that it concerns goods which may affect the health of end consumers, their level of attention is likely to be higher than average or high, that is to say heightened, in accordance with settled case-law, even with regard to pharmaceutical products that can be purchased without prescription (see, to that effect, judgment of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 33 and the case-law cited). It is clear from the case-law that both a ‘high level of attention’ and a ‘higher than average level of attention’ indicate a heightened level of attentiveness on the part of the relevant public (judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 27). Furthermore, the applicant has not explained, in a precise and substantiated manner, how the general public concerned was in general a specialised public with particular knowledge in regard to the goods at issue. Its complaint must therefore be dismissed as unfounded.
The comparison of the goods
28      In the present case, the earlier mark was registered for ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; nutraceuticals; nutritional supplements’ in Class 5, whereas the contested mark was registered inter alia for the goods ‘compositions based on lactic bacteria for use as drugs and/or food/dietary supplements’ in the same class.
29      The Board of Appeal found that the goods at issue were identical, since the ‘compositions based on lactic bacteria for use as drugs’ and the ‘compositions based on lactic bacteria for use as food/dietary supplements’ were included in the earlier mark’s broader categories of ‘pharmaceutical preparations’ and ‘dietetic substances adapted for medical use’ respectively.
30      The applicant claims that, contrary to the Board of Appeal’s finding, the goods covered by the marks at issue cannot be considered identical but rather at most some of them could be regarded as similar, in so far as they fall within a more specialised category.
31      EUIPO and the intervener dispute those arguments.
32      In the present case, the Board of Appeal’s finding that the goods at issue are identical must be confirmed. In that regard, it should be borne in mind that, according to settled case-law, goods in the same class are considered to be identical when the goods covered by the earlier trade mark include the goods covered by the contested mark (see, to that effect, judgment of 7 April 2016, Industrias Tomás Morcillo v EUIPO – Aucar Trailer (Polycart A Whole Cart Full of Benefits), T‑613/14, not published, EU:T:2016:198, paragraph 22 and the case-law cited).
33      Thus, the fact that the goods covered by the contested mark are, according to the applicant, part of a ‘more specialised category’ is not such as to call into question the Board of Appeal’s finding that those goods were included in the broader categories ‘pharmaceutical preparations’ and ‘dietetic substances adapted for medical use’ (see, to that effect, judgment of 13 September 2010, Procter & Gamble v OHIM – Prestige Cosmetics (P&G PRESTIGE BEAUTE), T‑366/07, not published, EU:T:2010:394, paragraphs 53 and 54).
34      Accordingly, the applicant’s complaint that the Board of Appeal made an error of assessment in classifying the goods at issue as identical must be dismissed.
The distinctiveness of the earlier mark
35      In the contested decision, the Board of Appeal found, in essence, that the evidence produced by the applicant was insufficient to prove that the degree of distinctiveness of the earlier mark was ‘below average’ for the relevant public.
36      First of all, the Board of Appeal noted that the Court had already ruled in another case on the inherent distinctiveness of the earlier mark, holding that that mark performed its function as an indication of origin both for end consumers and for professionals, namely pharmacists and doctors, and finding that the applicant had not succeeded in showing that end consumers and professionals in the medical and pharmaceutical sectors perceived the earlier mark as a common name for the goods concerned in Class 5 (judgment of 18 May 2018, Mendes v EUIPO – Actial Farmaceutica (VSL#3), T‑419/17, EU:T:2018:282, paragraphs 45 to 48).
37      Next, the Board of Appeal found that the evidence produced by the applicant did not prove that the end consumers of the goods at issue perceived the element ‘VSL#3’ as being a reference to the common name of their active principle. In that regard, it noted that the specialised scientific documents submitted by the applicant did not target end consumers.
38      Lastly, for the sake of completeness, the Board of Appeal reached the same conclusion concerning the professional public, relying on the Court’s findings in the judgment of 18 May 2018, VSL#3 (T‑419/17, EU:T:2018:282), after finding that the content of the scientific publications produced before the Board was substantially analogous to that of the evidence produced in the proceedings that gave rise to that judgment.
39      The applicant submits that the Board of Appeal made an error of assessment in finding that the degree of distinctiveness of the earlier mark was normal. Indeed the applicant, relying on a list of scientific publications, submits that the earlier mark is perceived by the majority of the relevant public as an active ingredient and not as a trade mark, with the result that its distinctiveness is well below normal distinctiveness. The applicant relies, in that regard, on judicial proceedings in certain countries in Europe and in the United States which, in its view, confirm its submissions.
40      EUIPO and the intervener dispute those arguments.
41      In that regard, in the first place, it must be stated that, in the present case, the applicant does not contradict the Board of Appeal’s assertion that, as regards end consumers, the scientific documentation presented in the course of the administrative proceedings does not target that category of the public but merely refers again to a large number of scientific publications, without showing how those publications are relevant as regards the perception of end consumers.
42      In the second place, as regards the subsidiary ground of the contested decision concerning the perception of the professional public, the applicant relies on a list of scientific publications, without explaining how the Board of Appeal made an error of assessment in finding that the reasoning set out by the Court in paragraphs 46 to 48 of the judgment of 18 May 2018, VSL#3 (T‑419/17, EU:T:2018:282), could be applied to the present case. In particular, it does not show how that documentation would be relevant to general practitioners and pharmacists. It is also apparent from the annexes to the application that the element ‘VSL#3’ is frequently presented as a commercialised, registered mark corresponding to a ‘probiotic mixture’ or ‘a combination of diverse probiotics’, and not as an active principle.
43      In addition, as regards the various proceedings relied on by the applicant which took place before certain courts of the Member States and of the United States, it is sufficient to note that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 28 April 2021, France Agro v EUIPO – Chafay (Choumicha Saveurs), T‑311/20, not published, EU:T:2021:219, paragraph 40). Consequently, the distinctiveness of a sign as an EU trade mark must be assessed solely on the basis of the relevant legislation. Neither EUIPO nor, as the case may be, the Courts of the European Union, are bound – even if they may take them into consideration – by decisions adopted in a Member State, or indeed in a third country, and no provision of Regulation No 207/2009 requires EUIPO or, on appeal, the Court, to come to the same conclusions as those arrived at by national administrative or judicial authorities in similar circumstances.
44      Consequently, the complaint that the Board of Appeal made an error of assessment in finding that the evidence produced by the applicant was insufficient to establish that the distinctiveness of the earlier mark was below average must be dismissed as unfounded.
The comparison of the signs
45      In order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed (see judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 85 and the case-law cited).
46      Thus, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 30 January 2018, Arctic Cat v EUIPO – Slazengers (Representation of a member of the cat family jumping to the right), T‑113/16, not published, EU:T:2018:43, paragraph 30 and the case-law cited).
47      Furthermore, it is settled case-law that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question, reasonably well informed and reasonably observant and circumspect, plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
48      For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 10 March 2021, Kerry Luxembourg v EUIPO – Ornua (KERRYMAID), T‑693/19, not published, EU:T:2021:124, paragraph 53 and the case-law cited).
–       The analysis of the dominant and distinctive elements of the marks at issue
49      The Board of Appeal considered, first of all, that the sequence of capital letters ‘VSL’ and the number ‘3’ had normal distinctiveness. It then observed that the differentiating elements of the two marks, namely the symbol ‘#’ and the word ‘TOTAL’ in capital letters, were non-distinctive. As regards the symbol ‘#’, the Board of Appeal found that it was perceived by the majority of European Union consumers as meaning the word ‘number’, being placed before a number. The Board of Appeal also noted that the Court had already had occasion to state that the symbol ‘#’ was not distinctive and was not capable of rendering a mark distinctive, referring to the judgment of 5 September 2019, C&A v EUIPO (#BESTDEAL) (T‑753/18, not published, EU:T:2019:560, paragraph 31). As regards the word ‘TOTAL’ in capital letters, that would be associated with the concept of ‘complete [and] absolute’ by the vast majority of the target public in the European Union and, as such, would be perceived as conveying a mere laudatory message as regards the relevant goods, in particular that they are dietary supplements which consist of a complete formula or which can provide a complete or total benefit to consumers’ health.
50      That analysis by the Board of Appeal, which is not vitiated by an error of assessment, must be upheld. As regards the sequence of capital letters ‘VSL’ and the number ‘3’, the applicant does not adduce any new evidence which would call into question the findings of the Court in the judgment of 18 May 2018, VSL#3 (T‑419/17, EU:T:2018:282), and of the Board of Appeal in the contested decision, according to which those elements have normal distinctiveness. Furthermore, the applicant’s argument that the symbol ‘#’ is the distinctive and dominant element of the earlier mark, in so far as it was an uncommon symbol for marks at the time it was filed, is not substantiated in any way and, in any event, is not capable of rebutting the Board of Appeal’s reasoning. It must be observed that it is apparent from the case-law that the symbol ‘#’ may be likened to the exclamation mark or to the symbol ‘@’ and it is not capable of rendering a trade mark distinctive (see, to that effect, judgment of 5 September 2019, #BESTDEAL, T‑753/18, not published, EU:T:2019:560, paragraphs 31 to 33). Consequently, the argument must be rejected as unfounded.
–       The visual similarity
51      The Board of Appeal found that the signs at issue had an above-average degree of visual similarity for the relevant public, since they coincided in the distinctive elements ‘VSL’ and ‘3’, placed at the beginning. The Board of Appeal also found that the presence of two differentiating elements, namely the symbol ‘#’ and the word ‘TOTAL’ in capital letters, was not sufficient to offset that similarity, given that those elements were non-distinctive and the relevant public would rather identify the signs by their distinctive elements.
52      The applicant considers that, although the two marks at issue coincide in the sequence of capital letters ‘VSL’, the earlier mark is, nevertheless, distinguishable by virtue of the distinctive and dominant element constituted by the symbol ‘#’, which renders it more visually distinctive and more ‘dominant’ than the contested mark. Furthermore, the applicant points out that the contested mark contains a much larger number of letters than the earlier mark due to the affixation of the word ‘TOTAL’ in capital letters, which is absent from the earlier mark. Lastly, it submits that the sequence of capital letters ‘VSL’ and the number ‘3’ refer to the three species of lactobacilli present in the composition.
53      Those arguments are not capable of calling into question the Board of Appeal’s assessment of the visual similarity of the marks at issue, which must be confirmed. As is stated in paragraph 50 above, the ‘#’ symbol is non-distinctive and is not such as to dominate the image the public retains of the earlier mark. In addition, as regards the length of the contested mark, the Board of Appeal rightly pointed out that the length was mainly due to the presence of the word ‘TOTAL’ in capital letters, which was non-distinctive, and that, consequently, the difference in length between the signs was not to be overestimated.
54      Consequently, the Board of Appeal was correct in finding that the signs at issue had an above-average degree of visual similarity.
–       The phonetic similarity
55      The Board of Appeal found that the signs at issue were phonetically similar to an above-average degree. In that regard, it found that the pronunciation of the marks at issue coincided as regarded the distinctive elements, namely ‘VSL’ and ‘3’. According to the Board of Appeal, the element ‘#3’ is likely to be read by the relevant public simply as the number ‘3’. As regards the pronunciation of the word ‘total’, the Board of Appeal considered that it should not be given too much weight, since that element lacked distinctive character.
56      The applicant disputes that analysis and submits that the signs at issue are sufficiently different in their composition and their pronunciation, in that the earlier mark should be read by English-speaking consumers in the European Union as ‘vslnumberthree’ and the contested mark as ‘vslthreetotal’.
57      The Board of Appeal’s assessment that the signs at issue display an above-average degree of phonetic similarity must be upheld. The applicant provides no evidence to challenge the Board of Appeal’s finding that the pronunciation of the signs at issue coincides in their distinctive elements, namely ‘VSL’ and ‘3’. The symbol ‘#’ constitutes a non-distinctive element that may be likened to the exclamation mark and will probably not be pronounced by the relevant public. Therefore, the applicant’s argument that the earlier mark would be pronounced ‘vslnumberthree’ and not ‘vslthree’ must be rejected. Similarly, the word ‘total’, at the end of the contested mark, is non-distinctive, with the result that, as the Board of Appeal observed in paragraph 50 of the contested decision, it is not, in principle, such as to give rise to a significant difference in pronunciation.
58      Consequently, the Board of Appeal was correct in finding that the marks at issue had an above-average degree of phonetic similarity.
–       The conceptual similarity
59      The Board of Appeal found that the signs at issue displayed a low degree of conceptual similarity, in so far as they both contained a reference to the number ‘3’. The additional concept conveyed by the word ‘total’, which is non-distinctive, does not constitute a relevant conceptual difference.
60      The applicant submits that the signs at issue are conceptually different, due in particular to the word ‘total’, present in the contested sign, which has the sense of ‘complete [and] entire’.
61      The Board of Appeal’s assessment that the signs at issue display a low degree of conceptual similarity must be upheld. The applicant’s argument concerning the meaning of the word ‘total’ is not such as to call into question the Board of Appeal’s abovementioned assessment. As stated in paragraph 49 above, the word ‘total’ is a non-distinctive element and therefore cannot create a relevant conceptual difference.
62      Consequently, the Board of Appeal was correct in finding that the marks at issue had a low degree of conceptual similarity, having regard to the common element ‘3’.
63      In the light of the foregoing considerations, the applicant’s complaint that the Board of Appeal made an error of assessment in holding that the signs at issue displayed an above-average degree of visual and phonetic similarity and a low degree of conceptual similarity must be dismissed as unfounded.
The overall assessment of the likelihood of confusion
64      The Board of Appeal confirmed that a likelihood of confusion exists, including a likelihood of association, within the meaning of Article 8(1)(b) of Regulation No 207/2009. It found, in essence, that it was conceivable that the relevant public, even if it were very attentive, would perceive the contested mark as a variant of the earlier mark, denoting the same commercial origin. In that regard, the Board of Appeal considered that the goods covered by the marks at issue were identical and that the signs displayed visual and phonetic similarity to an above-average degree and conceptual similarity to a low degree.
65      The applicant disputes any likelihood of confusion. In that regard, first, it repeats, in essence, its arguments alleging that the consumer’s high level of attention, with regard to the goods at issue, leads it to perceive the differences between the signs more keenly and, second, it submits that the distinctiveness of the earlier mark is well below normal.
66      Having regard to all the relevant elements taken into account by the Board of Appeal in the overall assessment of the likelihood of confusion between the marks at issue and, in particular, the identity of the goods at issue (see paragraph 32 above), the high or higher than average level of attention of the public concerned (see paragraphs 24 to 27 above), the above-average degree of visual and phonetic similarity of the signs at issue, the low conceptual similarity (see paragraphs 54, 58 and 62 above) and the average inherent distinctiveness of the earlier mark (see paragraph 36 above), the Board of Appeal did not make an error of assessment in finding that a likelihood of confusion exists between the marks at issue on the part of the relevant public.
67      Accordingly, the applicant’s line of argument cannot be accepted. That line of argument rests on the premiss of errors of assessment relating to the level of attention of the relevant public and to the distinctiveness of the earlier mark. However, the Court has found in the considerations set out above that such errors were not established, with the result that the analysis of the likelihood of confusion cannot be vitiated either. Furthermore, the finding of a weak distinctive character for the earlier mark is not, in itself, capable of preventing a finding that there is a likelihood of confusion (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).
68      Consequently, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
69      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
70      Since the applicant has been unsuccessful, it 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mendes SA to pay the costs.
Costeira
Kancheva
Dimitrakopoulos
Delivered in open court in Luxembourg on 30 November 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.