JUDGMENT OF THE GENERAL COURT (Second Chamber)
2 March 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark Skinovea – Earlier national word mark SKINOREN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑715/20,
Degode-Dermago Development GmbH, established in Strausberg (Germany), represented by O. Spieker, A. Schönfleisch and N. Willich, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Leo Pharma A/S, established in Ballerup (Denmark),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 September 2020 (Case R 337/2020‑5) relating to opposition proceedings between Leo Pharma and Degode-Dermago Development,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 4 December 2020,
having regard to the response lodged at the Court Registry on 23 March 2021,
further to the hearing on 25 October 2021,
gives the following
Judgment
Background to the dispute
1        On 9 May 2018, the applicant, Degode-Dermago Development GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 Skinovea.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 3, 5, 35 and 44 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: ‘Soaps; essential oils; lotions for hair; cosmetics; toiletries; face masks (body care preparations), face packs (body care preparations), preparations for cleaning, caring for and beautifying the hair; conditioning preparations for the hair, cosmetic hair dressing preparations, shampoo, gels, mousses and conditioners and preparations in aerosol form for hair care; body care preparations and cosmetics, in particular creams, milk, lotions, gels and powder for the face, body and hands; cosmetic creams; non-medicated skin lotions; skincare cosmetics, particularly skin soap, skin cream, skin lotion, skin conditioners, skin care mousse, skin cleansing cream, skin cleansing lotion, skin cleansing foams, skin cleansers; non-medicated skin serums; skin masks [cosmetics]; skin balsams; skin care oils [cosmetic]; essences for skin care; skin emollients; moisturising skin creams [cosmetic]; moisturising skin lotions [cosmetic]; non-medicated stimulating lotions for the skin; non-medicated skin clarifying lotions; cosmetic preparations for protecting the skin; cosmetic preparations for dry skin during pregnancy; skin emollients [non-medicated]; topical skin sprays for cosmetic purposes; cosmetic products in the form of aerosols for skincare; cosmetics for the treatment of dry skin; cosmetics for use in the treatment of wrinkled skin; shower and bath gel, foaming bath gels for body care, cosmetic bath foam and shower washes, preparations for baths; none of the aforesaid goods intended for sale in pharmacies’;
–        Class 5: ‘Pharmaceutical preparations; medicated skin creams; skin tonics [medicated]; medicated skin lotions; medicated skin lotions; skin care lotions [medicated]; pharmacological preparations for skin care; medicated preparations for skin treatment; skin care preparations for medical use; skin care creams for medical use; skin care creams for medical use; alcohol-based antibacterial skin sanitiser gels; anti-dermoinfectives; pharmaceutical preparations for skin care; medicinal creams for the protection of the skin; pharmaceutical preparations for treating epidermal problems; pharmaceutical preparations for treating skin disorders; medicated ointments for application to the skin; preparations for cleansing the skin for medical use; antiseptic sprays in aerosol form for use on the skin; pharmaceutical preparations for preventing skin blemishes during pregnancy; pharmaceutical preparations for hydrating the skin during pregnancy; pharmaceutical preparations for treating dry skin caused by pregnancy; pharmaceutical products and preparations against dry skin caused by pregnancy; pharmaceutical products and preparations for hydrating the skin during pregnancy; transdermal patches; sprays for applying to the skin for medical purposes; disinfectants’;
–        Class 35: ‘Retailing, in particular via the internet, of the following goods: pharmaceutical preparations, medicated skin creams, skin tonics (medicated), pharmaceutical skin lotions, medicated skin lotions, medicated skin care lotions, pharmacological skin care preparations; retailing, in particular via the internet, of the following goods: medicated preparations for skin treatment, skin care preparations for medical use, skin care creams for medical use, medicated creams for skin care; retailing, in particular via the internet, of the following goods: anti-dermoinfectives, pharmaceutical preparations for skin care, medicated creams for protecting the skin; retailing, in particular via the internet, of the following goods: pharmaceutical preparations for treating skin problems, pharmaceutical preparations for treating skin disorders, medicated ointments for application to the skin; retailing, in particular via the internet, of the following goods: skin cleansing preparations for medical use; retailing, in particular via the internet, of the following goods: pharmaceutical preparations for preventing skin blemishes during pregnancy, pharmaceutical preparations for hydrating the skin during pregnancy, pharmaceutical preparations for treating dry skin during pregnancy, pharmaceutical products and preparations for preventing dry skin during pregnancy; retailing, in particular via the internet, of the following goods: pharmaceutical products and preparations for improving the moisture content of the skin during pregnancy, skin plasters for transdermal administration of pharmaceuticals, topical sprays for medical purposes’;
–        Class 44: ‘Advisory services relating to health; health care consultancy services [medical]; advisory services relating to health’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2018/117 of 22 June 2018.
5        On 21 September 2018, Bayer Pharma AG, the legal predecessor of the other party to the proceedings before the Board of Appeal, Leo Pharma A/S, filed a notice of opposition pursuant to Article 46 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, the goods and services referred to in paragraph 3 above in particular.
6        The opposition was founded on, inter alia, the earlier Bulgarian word mark SKINOREN, filed on 2 November 1984 and registered on 22 May 1985 under number 14740 in respect of the goods in Class 5 corresponding to the following description: ‘Pharmaceutical products, including products for topical treatment for acne’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.
8        On 11 December 2019, the Opposition Division upheld the opposition in part in respect of the goods and the services referred to in paragraph 3 above.
9        On 11 February 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 4 September 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal. In particular, the Board of Appeal found, first, that the relevant public was made up of the general public and professionals, inter alia, in the cosmetics, pharmaceutical and medical sectors, whose level of attention varied from average to high, and that the relevant territory was Bulgaria. Secondly, as regards the comparison of the goods and services, it found that the goods in Class 3 covered by the mark applied for were similar to a low degree to the goods in Class 5 covered by the earlier mark, that the goods in Class 5 covered by the marks at issue were identical, and that the services in Classes 35 and 44 covered by the mark applied for had either a certain degree of similarity or a low degree of similarity with the goods in Class 5 covered by the earlier mark. Thirdly, as regards the comparison of the signs at issue, the Board of Appeal found that the word element ‘skin’, which had a normal degree of inherent distinctiveness for a significant part of the relevant public, was no less distinctive than the endings of the signs at issue and had a dominant first position, and that the signs at issue had a high degree of visual similarity and an average degree of phonetic similarity and that their conceptual comparison was neutral. Fourthly, it found that the earlier mark had an average degree of inherent distinctiveness. Accordingly, the Board of Appeal found, fifthly, that, despite the high level of attention of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 on the part of that public between the earlier mark SKINOREN and the mark applied for as regards certain goods and services.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
13      At the hearing, in answer to a question asked by the Court, the applicant withdrew the head of claim seeking registration of the mark applied for ‘in respect of all the goods and services for which protection was sought’, of which formal note was taken in the minutes of the hearing.
Law
14      In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It complains that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of that article.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16      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 the same 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).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
18      In the light of those considerations, it is necessary to examine whether the Board of Appeal was right to consider that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
The relevant public and territory
19      According to the case-law, 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 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
20      In the contested decision, the Board of Appeal noted that the relevant public was composed of the general public and of professionals, in the cosmetics, pharmaceutical and medical sectors in particular, situated in Bulgaria. It considered that the level of attention of the relevant public was average in respect of cosmetics and toiletries and high in respect of pharmaceutical and medical preparations, the retailing of those goods and advisory and consultancy services relating to health and healthcare. Thus, according to the Board of Appeal, the level of attention of the relevant public will range from average to high.
21      In the present case, as regards, in the first place, the definition of the relevant public, it must be noted that, having regard to the nature of the goods and services in question, namely cosmetics in Class 3, pharmaceutical or medical products in Class 5, retailing in Class 35 relating to pharmaceutical or medical products, and consultancy services relating to health in Class 44, the Board of Appeal correctly found in paragraph 26 of the contested decision that the relevant public was made up of the general public and professionals, inter alia, in the cosmetics, pharmaceutical and medical sectors.
22      Regarding the level of attention of the relevant public, the Board of Appeal also correctly noted in paragraph 27 of the contested decision that that level of attention could range from average to high. In that connection, it must be stated, as noted by EUIPO, that, although the level of attention of the relevant public in relation to goods in Class 5 is high (see, to that effect, judgments of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraphs 17 to 19; of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraphs 39, 41 and 42 and the case-law cited; and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraphs 26 to 28), as it is in relation to services in Class 35 relating to goods in Class 5 and services in Class 44 (see, to that effect, judgment of 20 January 2021, Apologistics v EUIPO – Peikert (discount-apotheke.de), T‑844/19, not published, EU:T:2021:25, paragraphs 32 and 33), the level of attention of the part of the relevant public corresponding to the general public, when purchasing goods in Class 3, is average (see, to that effect, judgment of 19 September 2019, Unifarco v EUIPO – GD Tecnologie Interdisciplinari Farmaceutiche (TRICOPID), T‑359/18, not published, EU:T:2019:626, paragraphs 83 and 84).
23      Regarding, in the second place, the relevant territory, the Board of Appeal’s approach – which has not, moreover, been disputed by the applicant – must also be endorsed, namely that the relevant territory was, in the present case, Bulgaria. Given that the opposition was based on, inter alia, the earlier Bulgarian mark SKINOREN and that it is sufficient that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 exists on the part of the relevant public in the territory in which the earlier mark is protected, the Board of Appeal correctly took into consideration the perception of the relevant Bulgarian public. In addition, 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 2017/1001 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).
Comparison of the goods and services
24      According to settled case-law, in assessing the similarity of 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. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21 and the case-law cited, and 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).
25      It should be borne in mind that the principles applicable to the comparison of goods also apply to the comparison between goods and services. Admittedly, due to their very nature, in particular the fact that goods are fungible and services are not, goods are, as a general rule, different from services (judgment of 24 January 2019, Brown Street Holdings v EUIPO – Enesan (FIGHT LIFE), T‑800/17, not published, EU:T:2019:31, paragraph 25). Nevertheless, the fact remains that they can be complementary or that services can serve the same purpose or have the same intended use as goods and therefore be in competition with the latter. It follows that, in some cases, goods and services can be found to be similar. In particular, it is apparent from the case-law that goods and the retailing of those goods are similar (see judgment of 5 July 2012, Comercial Losan v OHIM – McDonald’s International Property (Mc. Baby), T‑466/09, not published, EU:T:2012:346, paragraph 24 and the case-law cited).
26      It should also be noted that, according to case-law, goods and services must not belong necessarily to the same class or even the same category within a given class in order reasonably to be the subject of a comparison and give rise to a finding of similarity or lack thereof (see judgment of 14 December 2006, Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), T‑392/04, not published, EU:T:2006:400, paragraph 77 and the case-law cited).
The comparison of the goods in Class 3 covered by the mark applied for with the goods in Class 5 designated by the earlier mark
27      Regarding the goods in Class 3 covered by the mark applied for, the Board of Appeal took the view that, although their intended purpose is different from that of the pharmaceutical preparations in Class 5 designated by the earlier mark, they could share the same purpose, use the same distribution channels, be intended for the same public and have the same manufacturers. Thus, according to the Board of Appeal, those goods have a low degree of similarity.
28      The applicant disputes that assessment, observing that the earlier mark does not designate goods in Class 3, the goods in that class covered by the mark applied for do not relate to skin only and are different from the goods in Class 5 designated by the earlier mark in that they do not have the same nature or purpose, they do not share the same distribution channels and do not target the same public.
29      EUIPO disputes the applicant’s arguments.
30      At the outset, it must be noted, as pointed out by EUIPO, that the goods designated by the earlier mark cannot be considered to be limited to ‘products for topical treatment for acne’. It is apparent from the use of the expression ‘including’ that the ‘products for topical treatment for acne’ are merely examples of the ‘pharmaceutical products’ designated by the earlier mark (see, by analogy, judgment of 14 January 2016, Vodafone, C‑395/14, EU:C:2016:9, paragraph 41).
31      In the light of that statement, it must be noted, as is apparent from paragraph 33 of the contested decision that while ‘pharmaceutical products’ in Class 5 designated by the earlier mark relate to human health issues and can therefore, for example, remedy skin or hair issues, cosmetics in Class 3 covered by the mark applied for have, conversely, the purpose of improving physical appearance and do not therefore, in principle, have pharmaceutical properties. It follows that, although the nature of pharmaceutical preparations is different to that of cosmetics due to their therapeutic indication, they can nevertheless include, similarly to the cosmetics covered by the mark applied for, goods intended to be applied to skin or hair, in particular in creams, lotions or oils (see, to that effect and by analogy, judgment of 24 March 2021, Laboratorios Ern v EUIPO – Sanolie (SANOLIE), T‑175/20, not published, EU:T:2021:165, paragraph 42).
32      It must also be held, as the Board of Appeal did in paragraphs 34 and 35 of the contested decision, that some goods in Classes 3 and 5 can share the same purpose, be sold via the same distribution channels such as pharmacies or other specialised shops and are often manufactured by the same companies. Similarly, those goods are often intended for the same end users (see, to that effect, judgment of 13 May 2015, Harper Hygienics v OHIM – Clinique Laboratories (CLEANIC intimate), T‑363/13, not published, EU:T:2015:276, paragraph 41).
33      It is apparent from the foregoing considerations that, in the context of an overall approach, it must be held that, having regard to the difference in relation to the therapeutic indication of the pharmaceutical preparations in Class 5 designated by the earlier mark, whereas the goods in Class 3 covered by the mark applied for are cosmetic, those goods must be regarded as having a low degree of similarity (see, to that effect, judgment of 24 March 2021, SANOLIE, T‑175/20, not published, EU:T:2021:165, paragraph 43).
34      Regarding the applicant’s argument that the earlier mark does not designate goods in Class 3, it is sufficient to recall that, in accordance with the case-law cited in paragraph 26 above, goods must not necessarily be in the same class to be compared validly and for a finding of similarity to be possible.
35      In those circumstances, contrary to the applicant’s claim, it must be held that the Board of Appeal correctly found that the goods in Class 3 covered by the mark applied for have a low degree of similarity with the pharmaceutical preparations in Class 5 designated by the earlier mark.
The comparison of the goods in Class 5 covered by the mark applied for with the goods in that class designated by the earlier mark
36      As regards the goods in Class 5 covered by the mark applied for, the Board of Appeal found that they were identical to the goods in that class designated by the earlier mark.
37      The applicant disagrees with the Board of Appeal’s assessment and submits that the goods in Class 5 covered by the mark applied for are not comparable to the goods in Class 5 covered by the earlier mark, in so far as some of them are used mainly during pregnancy, they also include medical products – unlike the goods covered by the earlier mark which include only pharmaceutical preparations – and in so far as the two categories of goods concerned are very broad.
38      EUIPO disputes the applicant’s arguments.
39      In that connection, it must be noted that goods can be considered to be identical when the services covered by the earlier mark are included in a more general category covered by the mark applied for (judgment of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53) or, conversely, when the goods covered by the earlier mark are included in a more general category covered by the mark applied for (judgments of 23 October 2002, Oberhauser v OHIM – Petit Liberto (Fifties), T‑104/01, EU:T:2002:262, paragraphs 32 and 33, and of 18 February 2004, Koubi v OHIM – Flabesa (CONFORFLEX), T‑10/03, EU:T:2004:46, paragraphs 41 and 42).
40      In the present case, it must be noted that, having regard to the description of the goods, the goods in Class 5 covered by the mark applied for come, for the most part, within the broader category of ‘pharmaceutical products’ in Class 5 designated by the earlier mark. Accordingly, it must be found that those goods are identical.
41      Regarding the goods for medical use in Class 5 covered by the mark applied for, it must be noted that, even assuming that those goods are not identical to the pharmaceutical preparations in Class 5 designated by the earlier mark, this does not make it impossible to compare them, as all those goods must, in any event, be regarded, as EUIPO states correctly, as being highly similar. Those goods are intended for the same public and have the same intended purpose, as they are intended for use in treatment. They are also of the same nature, given that they are perceived by consumers as goods belonging to the same general category of healthcare products. Furthermore, they are highly complementary in so far as sanitary preparations for medical purposes may prove to be indispensable when pharmaceutical preparations are administered. Lastly, they are sold in the same establishments, namely pharmacies (see, by analogy, judgment of 28 October 2010, Farmeco v OHIM – Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 30).
42      The same is true of disinfectants which, according to case-law, have a strong complementary connection with pharmaceutical preparations in the sense that those goods have the same purpose or intended use (medical care), are intended for the same consumers and use the same distribution channels (see judgment of 3 June 2015, Pensa Pharma v OHIM – Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 135).
43      It follows from the foregoing that the goods in Class 5 covered by the mark applied for must be regarded as being identical to the goods in that class designated by the earlier mark or, for some of those goods, at least highly similar.
The comparison of the services in Classes 35 and 44 covered by the mark applied for with the goods in Class 5 designated by the earlier mark
44      In paragraph 37 of the contested decision, the Board of Appeal observed that the retail services in Class 35 covered by the mark applied for concerned goods designated by the earlier mark. Thus, according to the Board of Appeal, those services can, in essence, be provided in the same sales outlets as the goods designated by the earlier mark. The Board of Appeal also observed, in paragraphs 39 and 40 of the contested decision, that those retail services were provided when those goods were sold and that, due to that close connection, they were complementary. Thus, the retail services in Class 35 covered by the mark applied for have a certain degree of similarity with the goods in Class 5 designated by the earlier mark.
45      Regarding the services in Class 44 covered by the earlier mark, the Board of Appeal took the view, in paragraphs 41 and 42 of the contested decision, that they had a low degree of similarity with the goods in Class 5 designated by the earlier mark, in so far as they could be intended for the same public and be complementary.
46      According to the applicant, a similarity between the services in Class 35 covered by the mark applied for and the goods in Class 5 designated by the earlier mark must be precluded in so far as ‘small contact points’, in essence, between those goods and those services are not sufficient in the context of general terms.
47      EUIPO disputes the applicant’s arguments.
48      In the present case, regarding, first, the services in Class 35 covered by the mark applied for, it must be observed, as the Board of Appeal did, that they are retail services concerning, in essence, pharmaceutical preparations. It must also be stressed that the goods designated by the earlier mark are, specifically, pharmaceutical preparations.
49      In that connection, it must be stated that, although no finding of similarity can be made regarding the nature, intended purpose or use of those goods and services, those goods and those services can nevertheless be regarded as similar due to the fact that they are offered for sale in the same places, as noted correctly by the Board of Appeal, and to the fact that the ‘retailing services’ concern pharmaceutical preparations. Those goods are, in addition, complementary to the services in question, inasmuch as, as also noted correctly by the Board of Appeal, they are indispensable or important for those services (see, by analogy, judgment of 25 January 2018, Brunner v EUIPO – CBM (H HOLY HAFERL HAFERL SHOE COUTURE), T‑367/16, not published, EU:T:2018:28, paragraph 41 and the case-law cited).
50      Therefore, it must be observed that, due to their different nature, intended purpose and use, there is a low degree of similarity between the services in Class 35 covered by the mark applied for and the goods in Class 5 designated by the earlier mark.
51      Regarding, secondly, the services in Class 44 covered by the mark applied for, it is appropriate to endorse the Board of Appeal’s finding that those services can relate to the use of certain pharmaceutical preparations designated by the earlier marks, which means that they are complementary.
52      The Board of Appeal’s analysis is in line with case-law. The Court has held that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. This applies to goods and services which are intended for the same public and can be used together (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
53      Accordingly, the Board of Appeal’s analysis in the contested decision must be confirmed, in so far as it found that the services in Class 44 covered by the mark applied for and the goods in Class 5 designated by the earlier mark had, in essence, a low degree of similarity.
54      It follows from the foregoing considerations that the Board of Appeal found correctly, in the contested decision, that the goods and services in question were identical in part and similar in part to different degrees.
The comparison of the signs
55      At the outset, it should be borne in mind that two marks are similar when, from the point of view of the relevant public, they are at least identical in part as regards one or more relevant aspects. According to case-law, the relevant aspects are the visual, phonetic and conceptual aspects (see judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited).
56      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this 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).
57      It is in the light of those considerations that it is appropriate to assess the existence of distinctive and dominant elements in those signs before examining whether the signs at issue are similar visually, phonetically and conceptually.
The distinctive and dominant elements of the signs at issue
58      For the purpose of assessing the distinctive character of an element making up 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, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
59      It should also be borne in mind that, when certain elements are descriptive of the goods and services in respect of which the mark is protected or of the services designated by the application for registration, those elements are regarded as having only a low or even very low degree of distinctiveness (see, to that effect, judgments of 12 September 2007, Koipe v OHIM – Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. On account of their low or even very low degree of distinctiveness, the descriptive elements of a mark are not generally regarded by the public as being dominant in the overall impression it makes except where, on account, in particular of their position or size, they might make an impression on the public and be remembered by that public (see, to that effect, judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited).
60      Moreover, it must be noted that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a word sign, he or she will break it down into elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57).
61      In the present case, the Board of Appeal noted, in paragraphs 51 to 55 of the contested decision, that the word element ‘skin’ common to the marks at issue did not have any clear meaning for a significant part of the relevant public and had a normal degree of distinctiveness. The Board of Appeal considered that the Bulgarian public’s knowledge of English is generally deemed to be low, that the word ‘skin’ is not a basic English word and that its Bulgarian equivalent is very different. The Board of Appeal also noted that that element forms a homogenous unit with the elements following it, namely the elements ‘ovea’ and ‘oren’, which would make it more difficult for the Bulgarian public to recognise that word. Thus, according to the Board of Appeal, the common element ‘skin’ is no less distinctive than the endings of the signs at issue. In addition, the Board of Appeal found that the element ‘skin’, placed at the beginning of the marks at issue, played an important role in the assessment of the similarity of those marks and held a dominant initial position in those marks.
62      The applicant submits that the initial part common to the signs at issue, that is to say, the word element ‘skin’, which is part of basic English vocabulary understood by the relevant public, is purely descriptive and therefore devoid of distinctive character. Thus, according to the applicant, it is the endings of the signs at issue which must be taken into account when comparing them.
63      EUIPO disputes the applicant’s arguments.
64      Regarding the distinctive elements of the marks at issue, it must be noted, as the Board of Appeal did in paragraph 52 of the contested decision, that, in the present case, it has not been established that the relevant Bulgarian public was able to understand the meaning of the English term ‘skin’. In addition, it must be found that the English term ‘skin’ does not bear any apparent similarity to its Bulgarian translation, using the Cyrillic alphabet, ‘кожа’ (see, by analogy, judgment of 22 September 2017, Nara Tekstil Sanayi Ve Ticaret v EUIPO – NBC Fourth Realty (NaraMaxx), T‑586/15, not published, EU:T:2017:643, paragraph 29). It follows that, contrary to the applicant’s claims, the term ‘skin’ cannot be understood by the relevant Bulgarian public as meaning ‘skin’ and must accordingly be regarded as having an average, not low, degree of distinctiveness for the goods and services in question.
65      Regarding the applicant’s claim that the word ‘skin’ is a basic English word understood by the relevant public, which should be excluded from the comparison of the signs on account of its descriptive – and therefore not distinctive – character, it is clear that no analysis intended to describe the relevant public’s approach to a sign can claim to be exhaustive to the effect that all the members of that public will adopt an identical approach without exception. In those circumstances, is for the applicant to demonstrate, with corroborating evidence, that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of that public (see, to that effect, judgments of 19 April 2013, Hultafors Group v OHIM – Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 26, and of 25 January 2018, H HOLY HAFERL HAFERL SHOE COUTURE, T‑367/16, not published, EU:T:2018:28, paragraph 25). In the present case, the applicant did no more than assert that the word ‘skin’ is a basic English word understood by the relevant public, without providing any supporting information to prove that public’s understanding of that term.
66      That finding is borne out by the fact that, as the applicant states, the signs at issue do not designate skincare products alone, but also cover other goods and services such as pharmaceutical preparations generally, haircare products or disinfectants, with which the word ‘skin’ does not have a specific relationship (see, by analogy, judgment of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 53).
67      Furthermore, it must be borne in mind that the low degree of distinctiveness of one element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the perception of the relevant public (see, to that effect, judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).
68      In the present case, the word ‘skin’ is placed at the beginning of the marks at issue and is of the same length as the endings of those marks, namely the elements ‘oren’ and ‘ovea’, which do not have any specific meaning.
69      Accordingly, the Board of Appeal stated correctly in paragraph 55 of the contested decision that the initial part of the marks at issue made up of the element ‘skin’ was no less distinctive than the endings of those marks.
70      In those circumstances, it must be observed that the common element ‘skin’ contributes significantly to the overall impression given by the marks at issue in so far as, since it is placed at the beginning of those marks, it may have a greater impact than the rest of the sign (see, to that effect, judgments of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65, and of 22 May 2008, NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 55) and be more likely to catch the consumer’s attention than the following components (see, to that effect, judgment of 10 December 2008, Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 28 and the case-law cited). However, even though the elements ‘ovea’ and ‘oren’ also have an average degree of distinctiveness and have the same length as the element ‘skin’, they cannot be regarded as being negligible in the overall impression.
71      It is appropriate to examine, taking into account the foregoing considerations, whether the visual, phonetic and conceptual comparison of the marks at issue carried out by the Board of Appeal is vitiated by errors of assessment.
The visual, phonetic and conceptual comparison
–       Visual comparison
72      Regarding the visual comparison, the Board of Appeal stated, in paragraph 57 of the contested decision, that the marks at issue were made up of eight letters, six of which were identical, and differed in the letters ‘r’ and ‘n’ present in the earlier mark and the letters ‘v’ and ‘a’ present in the mark applied for. According to the Board of Appeal, in so far as the relevant public generally pays closer attention to the beginning of a mark than to its end, the marks at issue have a high degree of visual similarity.
73      The applicant maintains that the marks at issue differ visually. It claims that the letters in the distinctive parts of the signs at issue are different. The applicant adds, referring to paragraphs 81 and 82 of the judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL) (T‑402/07, EU:T:2009:85), that the fact that the marks at issue have the same number of letters and share some of those letters is not sufficient to establish any similarity and that the relevant public is not aware of the exact number of letters that make up those marks. Moreover, according to the applicant, the assumption that the public generally attaches greater importance to the beginning of a mark than to its ending cannot apply in every case.
74      EUIPO disputes the applicant’s arguments.
75      In the present case, it must be stated, as noted by the Board of Appeal, that the signs at issue are each made up of eight letters. In addition, apart from the letters ‘r’ and ‘n’ for the earlier mark and ‘v’ and ‘a’ for the mark applied for, they are identical, in so far as six of their letters are the same and placed in the same order. It follows that the marks at issue have a high degree of visual similarity.
76      The applicant’s argument that the letters in the distinctive parts of the signs at issue are different, which precludes, in essence, any similarity, cannot be accepted. In that regard, it is sufficient to recall, as follows from paragraph 69 above, that the initial part ‘skin’ of the marks at issue is no less distinctive than the endings of those marks.
77      The applicant’s argument that the marks at issue are, in essence, visually different, in so far as it is apparent from the judgment of 25 March 2009, ARCOL (T‑402/07, EU:T:2009:85), that the fact that the marks at issue have the same number of letters and share some of those letters is not sufficient to establish any similarity, since the relevant public is not aware of the exact number of letters that make up those marks, must also be rejected. The applicant fails to specify that it follows from paragraph 83 of that judgment that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order. In the present case, the marks at issue share, as is apparent from paragraph 76 above, six out of eight letters and those identical letters are placed in the same order.
78      As for the applicant’s argument regarding the fact that the assumption that the public generally attaches greater importance to the beginning of a mark than its ending cannot apply in every case, it must be borne in mind that although, admittedly, according to case-law, the fact that consumers normally attach greater importance to the beginning of a mark cannot apply in every case, it must however be noted in the present case that the common element, placed at the beginning of the marks at issue, is likely to catch the attention of the relevant public on account of its length and position.
79      Consequently, the Board of Appeal was right to find, in paragraph 57 of the contested decision, that the marks at issue had a high degree of visual similarity.
–       Phonetic comparison
80      Regarding the phonetic comparison, the Board of Appeal stated in paragraph 58 of the contested decision that the first two syllables of the marks at issue were pronounced identically and the final parts ‘ren’ and ‘vea’ of those marks, even though they contain the letter ‘e’ placed in the same position, were pronounced differently. Thus, according to the Board of Appeal, the marks at issue have an average degree of phonetic similarity.
81      The applicant claims that, having regard to their different endings, which changes the number of syllables and the rhythm of how they are pronounced, the signs are different phonetically.
82      EUIPO disputes the applicant’s arguments.
83      In the present case, it must be observed, as noted by the Board of Appeal, that the initial part ‘skino’ of the marks at issue is identical and that the first two syllables therefore coincide in their pronunciation. However, they differ in their endings ‘ren’ and ‘vea’.
84      Having regard to the case-law according to which consumers generally pay more attention to the beginning of a word, it must be observed that the identical pronunciation of the two first syllables of the signs at issue constitutes a sufficient indication of their phonetic similarity, which is not offset by the different pronunciation of their last syllables (see, to that effect, judgment of 23 October 2017, SeboCalm, T‑441/16, not published, EU:T:2017:747, paragraph 61).
85      Therefore, the Board of Appeal was right to hold that the signs at issue had an average degree of phonetic similarity.
–       Conceptual comparison
86      In paragraph 59 of the contested decision, the Board of Appeal found that the conceptual comparison was neutral for the Bulgarian public, who will perceive the signs at issue as being devoid of any meaning.
87      The applicant claims that the signs at issue cannot be regarded as being similar, since they are devoid of meaning.
88      EUIPO disputes the applicant’s arguments.
89      As a preliminary point, it must be borne in mind that, according to settled case-law, when the relevant public does not understand the meaning of the words of which marks are composed, it is impossible to carry out a conceptual comparison (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 180).
90      In the present case, it must be stated that, as EUIPO contends and as is apparent from paragraphs 64 to 69 above, the evidence in the case file is not sufficient to permit the finding that the average Bulgarian consumer is in a position to understand the meaning of the word ‘skin’ and of the elements ‘oren’ and ‘ovea’.
91      Therefore, the Board of Appeal rightly held that the signs at issue did not have a specific meaning for the relevant public and, therefore, that it was impossible to carry out a conceptual comparison.
92      In the light of all the foregoing, given that the signs at issue have a high degree of visual similarity, that the phonetic similarity is average and that it is impossible to carry out a conceptual comparison, as is clear from paragraphs 79, 85 and 91 above, the Board of Appeal rightly held, in paragraph 60 of the contested decision, that the signs at issue are similar ‘overall’.
The likelihood of confusion
93      The Board of Appeal found, in paragraphs 61 to 69 of the contested decision, that the earlier mark had a normal inherent degree of distinctiveness and that, having regard to the high degree of visual similarity and average degree of phonetic similarity, there was a likelihood that consumers would confuse the goods and services covered by the mark applied for with identical or similar goods designated by the earlier mark, despite the high level of attention in respect of certain goods and services.
94      The applicant maintains that, since the marks at issue are very different, ‘the theory of interaction’ is not applicable, with the result that the low degree of similarity between the goods and the services in question cannot be offset by any similarity between those marks. Thus, according to the applicant, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
95      EUIPO disputes the applicant’s arguments.
96      In that regard, it must be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
97      In the present case, the assessment of the Board of Appeal regarding the average degree of inherent distinctiveness of the earlier mark – which, moreover, is not challenged by the applicant – must be endorsed. To the extent that, as is clear from paragraphs 64 to 69 above, the evidence in the case file is not sufficient to find that the relevant public is in a position to understand the meaning of the word ‘skin’, it is appropriate to assume that that public will perceive the mark SKINOREN as devoid of meaning in respect of the goods it covers.
98      In the present case, it must be stated that, in the light of the fact that the goods and services in question are identical or similar to a certain extent (see paragraph 54 above), that the signs at issue have a high degree of visual similarity and an average degree of phonetic similarity (see paragraphs 79 and 85 above), that the signs at issue have no meaning for the relevant public (see paragraph 91 above) and that the earlier mark has an average degree of distinctiveness (see paragraph 97 above), the Board of Appeal rightly found, having regard to all the relevant factors taken into consideration in accordance with the case-law cited in paragraph 96 above, that there was a likelihood that the relevant public could believe that the goods and services in question come from the same undertaking or from economically linked undertakings, despite the high level of attention of the relevant public in respect of certain goods and services.
99      Since consumers have an imperfect recollection of trade marks, it is very likely that, in the light of the presence and the position of the element in common in the marks at issue, the relevant public, even though it displays a high level of attention with regard to some of the goods and services at issue, may be led to believe that the goods and services at issue come from the same undertaking or from economically linked undertakings (see, by analogy, judgment of 25 November 2020, Impera v EUIPO – Euro Games Technology (Flaming Forties), T‑875/19, not published, EU:T:2020:564, paragraph 83).
100    In light of all the foregoing, the single plea alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and, therefore, the action in its entirety must be dismissed.
Costs
101    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, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Degode-Dermago Development GmbH to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 2 March 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.