JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
30 March 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark SO COUTURE – EU word mark SO…? – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑30/21,
L’Oréal, established in Clichy (France), represented by M. Treis and E.‑M. Strobel, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Debonair Trading Internacional Lda, established in Funchal (Portugal), represented by J. Quirin and J.‑P. Jacquey, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 November 2020 (Case R 158/2016‑5), relating to opposition proceedings between Debonair Trading Internacional and L’Oréal,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, R. Mastroianni and M. Brkan (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 21 January 2021,
having regard to the response of EUIPO lodged at the Court Registry on 26 March 2021,
having regard to the response of the intervener lodged at the Court Registry on 23 April 2021,
further to the hearing on 12 January 2022,
gives the following
Judgment
Background to the dispute
1        On 3 October 2013, the applicant, L’Oréal, 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 SO COUTURE.
3        The goods in respect of which registration of the trade mark was sought are in Class 3 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 to the following description: ‘Make-up preparations’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 212/2013 of 7 November 2013.
5        On 4 February 2014, the intervener, Debonair Trading Internacional Lda, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was founded on, inter alia, the earlier EU word mark SO…?, filed on 7 March 1997 and registered on 26 February 2001 under the number 485 078 designating, inter alia, goods in Class 3 and corresponding to the following description: ‘Fragrances’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).
8        Following the applicant’s request and in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), EUIPO invited the intervener to provide proof of genuine use of the earlier trade mark relied on in support of the opposition. The intervener complied with that request within the prescribed period.
9        On 14 December 2015, the Opposition Division rejected the opposition in its entirety on the basis of Article 8(1)(b), (4) and (5) of Regulation No 207/2009.
10      On 25 January 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 3 November 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision and upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009. In particular, it found, first of all, that genuine use of the earlier mark SO…? had been shown for fragrances. Next, as regards the assessment of the likelihood of confusion, it found that the relevant public consisted of the general public in the European Union with an average level of attention and that the goods at issue were similar to an average degree. Furthermore, it concluded that there was at least an average degree of visual similarity between the marks at issue and, at most, an average degree of phonetic similarity. In addition, it found that the earlier mark had enhanced distinctiveness as a result of the relevant public’s recognition of that mark and that it belonged to a family of marks. At the end of its global assessment, the Board of Appeal concluded that there was a likelihood of confusion, at least for the English-speaking and French-speaking public of the European Union. It therefore refused registration of the mark applied for.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
15      As a preliminary point, it should be noted that the intervener requests the Court, by its first head of claim, to uphold the contested decision. Since upholding the contested decision is tantamount to dismissing the action, that head of claim must be understood as seeking, in essence, the dismissal of the action (see, to that effect, judgment of 25 November 2020, Impera v EUIPO – Euro Games Technology (Flaming Forties), T‑874/19, not published, EU:T:2020:563, paragraph 15).
16      Furthermore, given the date on which the application for registration at issue was filed, namely 3 October 2013, which is decisive 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, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).  Furthermore, in so far as, 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.
17      Consequently, in the present case, as regards the substantive rules, the references made by the applicant in its arguments to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the content of which is identical.
Admissibility
18      Without formally raising an objection within the meaning of Article 130 of the Rules of Procedure of the General Court, the intervener contends that the action is based on Article 72(1) of Regulation 2017/1001, whereas the applicable text is Regulation No 207/2009, and that it is therefore inadmissible.
19      In that regard, it should be recalled, in accordance with the case-law set out in paragraph 16 above, that the dispute is governed by the procedural provisions of Regulation 2017/1001 in force since 1 October 2017. Since the contested decision was delivered on 3 November 2020, the action before the General Court was correctly brought on the basis of Regulation 2017/1001. Moreover, it should be noted that Article 72(1) of Regulation 2017/1001 is, in essence, identical to Article 65(1) of Regulation No 207/2009.
20      Consequently, the applicant’s action must be held to be admissible.
Substance
21      In the application, the applicant relies, in essence, on two pleas in law, alleging, first, the loss of effects of the earlier mark under Regulation No 207/2009 and, second, an infringement of Article 8(1)(b) of Regulation No 207/2009.
22      As a preliminary point, it should be noted that, at the hearing, the applicant withdrew its first plea in law, by which it claimed that, since the withdrawal from the European Union of the United Kingdom of Great Britain and Northern Ireland, the evidence in connection with the latter could no longer substantiate, first, the enhanced distinctiveness of the earlier mark, that is to say, in essence, its highly distinctive character and, second, the existence of a family of marks. That withdrawal was noted in the minutes of the hearing. It follows that the Court will confine its examination solely to the plea alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.
23      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 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.
24      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. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and must take account of all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (judgments 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 of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 24).
25      For the purposes 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 (judgments of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42, and of 28 April 2021, JUMEX, T‑310/20, not published, EU:T:2021:227, paragraph 25).
26      Where the protection of the earlier trade mark extends to the whole 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 (judgment of 13 May 2020, Wonder Line v EUIPO – De Longhi Benelux (KENWELL), T‑284/19, not published, EU:T:2020:192, paragraph 22; see also, 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).
27      The present plea must be examined in the light of those considerations.
The relevant public and the comparison of the goods
28      In the first place, as regards the relevant public, 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 (judgments of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42, and of 13 May 2020, KENWELL, T‑284/19, not published, EU:T:2020:192, paragraph 24).
29      As the Board of Appeal found, without being contradicted by the parties, having regard to the fact that the goods covered, namely ‘make-up preparations’ and ‘fragrances’, are everyday consumer goods, they are aimed at the general public with an average level of attention. Furthermore, as regards the relevant territory, it established that, since the earlier mark was an EU trade mark, that territory consisted of the entire territory of the European Union.
30      In the second place, as regards the comparison of the goods covered by the marks at issue, the Board of Appeal noted that the contested goods are ‘make-up preparations’ similar to an average degree to ‘fragrances’ in respect of which proof of genuine use of the earlier mark had been adduced on account of the hygiene and cosmetic properties which they share. That finding was not disputed by the parties.
The comparison of the signs
31      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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35, and of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK), T‑497/18, not published, EU:T:2019:689, paragraph 52).
32      According to the case-law, 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, namely the visual, phonetic and conceptual aspects (judgments of 12 July 2012, Vermop Salmon v OHIM – Leifheit (Clean Twist), T‑61/11, not published, EU:T:2012:373, paragraph 26, and of 8 June 2017, Groupe Léa Nature v
EUIPO – Debonair Trading Internacional (SO’BiO ētic), T‑341/13 RENV, not published, EU:T:2017:381, paragraph 37).
33      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 19 May 2021, Puma v EUIPO – Gemma Group (Representation of a bounding feline), T‑510/19, not published, EU:T:2021:281, paragraph 35). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
34      With regard to the assessment of the dominant character of one or more given components of a composite mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of the other components. In addition, and as an ancillary point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35, and of 19 September 2019, WhiteWave Services v EUIPO – Fernandes (VeGa one), T‑176/17, not published, EU:T:2019:625, paragraph 51).
35      It should also be borne in mind that, according to case-law, for the purpose of assessing the distinctive character of a mark or of an element making up a mark, an assessment must be made of the greater or lesser capacity of that mark or element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (judgment of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready), T‑819/19, not published, EU:T:2020:596, paragraph 43).
36      It is common ground that the earlier mark is a word mark consisting of the word ‘so’, followed by three suspension dots and a question mark (‘the punctuation element’). The word mark applied for consists of the element ‘so’ followed by the word ‘couture’.
37      In the contested decision, after determining the more or less distinctive character of the elements making up the two signs at issue, the Board of Appeal compared them. It concluded that there was at least an average degree of visual similarity between the signs at issue and, at most, an average degree of phonetic similarity. Conceptually, it found that the earlier mark did not convey any specific meaning in relation to the goods at issue and that the word ‘couture’ referred to high fashion and luxury.
38      Before considering the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of the various elements of which the signs at issue consist.
–       The elements composing the signs at issue
39      The Board of Appeal found that the element ‘so’, although it is a simple and common English word capable of having different meanings, would probably be perceived, without any other context, as an introduction, a beginning of a phrase or a question creating a certain suspense. It found that, as that word did not allude to the nature or quality of the goods at issue, it had no connection with them. It therefore established that that word had an inherently normal distinctive character for cosmetics and perfumes. Furthermore, it noted that punctuation marks were generally not distinctive, that they had been found to be negligible in a case based on the same earlier mark (see, to that effect, judgment of 28 February 2019, Groupe Léa Nature v EUIPO, C‑505/17 P, not published, EU:C:2019:157, paragraph 52) and that the element ‘so’ was the dominant and intrinsically distinctive element of that earlier mark.
40      In the first place, as regards the distinctive character of the element ‘so’, the applicant disputes the Board of Appeal’s finding that it has a normal degree of intrinsic distinctiveness.
41      In the present case, it should be noted that, as EUIPO submits, the element ‘so’ has no connection with make-up preparations or fragrances. Furthermore, the fact that it is frequently used as a placeholder in everyday language, in particular in order to start a sentence, does not mean that its ability to indicate commercial origin is weak in relation to the goods at issue. Therefore, as the Board of Appeal found, it has a normal degree of inherent distinctiveness with regard to those goods.
42      That finding is not called into question by the applicant’s argument that the word ‘so’ does not have inherent distinctive character, since that would result in signs such as SO SEDUCTIVE or SO SENSUAL being registered for fragrances. It should be noted that the distinctive character analysed in the present case concerns only the element ‘so’, taken individually, and that there was nothing to prevent the Board of Appeal from examining that element separately from the punctuation element. In any event, the present case does not concern applications for registration of marks such as SO SEDUCTIVE and SO SENSUAL.
43      Lastly, as regards the applicant’s argument that the word ‘so’, like generic and banal adjectives such as ‘very’, ‘most’ and ‘like’, lacks distinctive character in accordance with EUIPO’s decision-making practice, it must be noted, with regard to the reference made to that practice, that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of the Boards of Appeal (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
44      In the second place, as regards the reference to the negligible nature of the punctuation element in the earlier mark, the applicant submits that that assessment in the case which gave rise to the judgment of 28 February 2019, Groupe Léa Nature v EUIPO (C‑505/17 P, not published, EU:C:2019:157), did not concern the earlier mark, which is common to both disputes, but the mark applied for, which is not comparable to the sign which is the subject of the present action. Moreover, the applicant maintains that there is no definitive rule that punctuation marks cannot have distinctive character, in particular where they are combined with other punctuation marks.
45      In that regard, it should be noted that, although the Court has already held that certain punctuation marks are not distinctive, since they are not perceived immediately as an indication of the commercial origin of the goods and do not enable the consumer to distinguish, without any possibility of confusion, the goods in question from others which have another origin (see, to that effect, judgments of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraphs 27 and 29, and of 10 January 2019, achtung ! v EUIPO (achtung !), T‑832/17, not published, EU:T:2019:2, paragraph 49), that finding does not preclude their being recognised as possessing a certain distinctive character having regard to the particularities of each case.
46      Nevertheless, in the present case, it should be noted that the Court of Justice has already established in a dispute relating to the same earlier mark that, in so far as the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the dots and the question mark at issue were found to be negligible having regard to the single verbal element ‘so’ (see, to that effect, judgment of 28 February 2019, Groupe Léa Nature v EUIPO, C‑505/17 P, not published, EU:C:2019:157, paragraph 52).
47      Therefore, it must be held that the Board of Appeal acted correctly in finding that the word element ‘so’ was the dominant and intrinsically distinctive element of the earlier mark and that the applicant’s assertion that the punctuation element is the most striking and distinctive cannot be upheld. It is that element ‘so’ which will give an indication of the commercial origin of the goods and will enable the consumer to distinguish, without any possibility of confusion, the goods at issue from those which have a separate origin.
48      In the third place, as regards the element ‘couture’ in the mark applied for, the Board of Appeal concluded that that word would be understood by consumers in English-speaking and French-speaking countries of the European Union as referring to ‘made-to-measure or bespoke clothing’, the producers of which are also active in the beauty and cosmetics market, and as a laudatory evocation of luxury and high quality. Therefore, it found that that word was laudatory and weak for the goods at issue.
49      The applicant submits that the Board of Appeal erred in treating the element ‘couture’ as if it were negligible, whereas, apart from being longer than the element ‘so’, it would be as prominent as that element. Furthermore, the consumer will, after reading the word ‘so’, look for the second element. It is therefore, the applicant argues, inconsistent to maintain that consumers would anticipate the second element while considering it to be negligible.
50      In that regard, it should first of all be noted that the Board of Appeal did not state that the element ‘couture’ was negligible, but merely considered it to be laudatory and, in essence, as having weak distinctive character with regard to the goods concerned. Next, the applicant does not dispute that the frequent combination of that element with the French adjective ‘haute’ (high), as in the element ‘haute couture’, confers on it a certain aura of luxury. The word ‘couture’, taken in isolation, is also capable of referring to the luxury and fashion sector in which the cosmetics and perfume market exists alongside the clothing market. Lastly, contrary to what the applicant claims, the word ‘couture’, although it is not an adjective, may also be understood by the relevant public, in particular by English-speaking and French-speaking consumers in the European Union, as referring to a style synonymous with high quality. Therefore, it must be held, as regards that part of the relevant public, that the word ‘couture’ is laudatory and has weak distinctive character in respect of the goods at issue.
51      That finding cannot be called into question by the applicant’s reference to an earlier decision of EUIPO which concluded that the element ‘couture’ had inherent distinctive character in respect of goods in Classes 18 and 25, namely bags and clothing. In that regard, it is necessary to recall the case-law referred to in paragraph 43 above, according to which the legality of those decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of the Boards of Appeal. In addition, even if the word ‘couture’ was also at issue in the Opposition Division’s decision relied on by the applicant, it must be pointed out that the circumstances of the present case were different. The Opposition Division had concluded in that case that the mark SEMI-COUTURE did not convey any meaning for the relevant public, whereas, in the circumstances of the present case, it is apparent from paragraph 50 above that the word ‘couture’ has a meaning for part of the relevant public and will be perceived as laudatory in relation to the goods at issue.
52      Similarly, as regards the applicant’s argument that the combination of the word ‘couture’ with the word ‘so’ leads to a contrast and has no meaning with regard to the goods concerned, it must be held that such a combination is, on the contrary, likely to mean ‘so luxurious’ or ‘very luxurious’. Furthermore, that combination does not give rise to any contrast within the mark applied for that might contribute to its distinctive character. Therefore, it must be pointed out that the Board of Appeal was right to find that the word ‘couture’ was laudatory and, in essence, had a weak distinctive character for the goods covered.
53      It is in the light of those considerations that the earlier mark must be compared to the mark applied for taken as a whole.
–       The visual comparison
54      The Board of Appeal emphasised that the first element of the earlier mark, the word ‘so’, was entirely included in the beginning of the mark applied for. Furthermore, it found that the differing elements between the marks, namely the punctuation element and the word ‘couture’, were, for a relevant part of consumers, ‘weak’ and occupied a less prominent position than the word ‘so’ in the two marks. It accordingly concluded that the marks at issue were visually similar to at least an average degree for English-speaking and French-speaking consumers in the European Union.
55      The applicant submits that the Board of Appeal erred in classifying the punctuation element as negligible. Furthermore, it maintains that the common element ‘so’ present in both signs is exceptionally short in length, which means that the relevant public is more likely to perceive the distinguishing elements. Therefore, according to the applicant, the signs at issue are visually different or similar to a very low degree.
56      EUIPO and the intervener dispute the applicant’s arguments.
57      It must be pointed out that, according to the case-law, the fact that the first element in the earlier mark is fully included in the mark applied for and that it also appears in the first position in that mark makes it impossible to rule out any similarity between the signs at issue. In that regard, it must be borne in mind, first, that the fact that a mark consists of the earlier mark, to which another word has been added, is an indication that the two marks are similar and, secondly, that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see, to that effect, judgments of 22 May 2012, Sport Eybl & Sports Experts v OHIM – Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraphs 26 and 36, and of 8 June 2017, SO’BiO ētic, T‑341/13 RENV, not published, EU:T:2017:381, paragraph 44).
58      In the present case, despite its limited length, it must be held that the first element ‘so’ of the earlier mark is fully included, also as the first element, in the mark applied for and that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end. Furthermore, as regards the differing elements between the marks, the word ‘couture’ in the mark applied for, although not negligible, has only weak distinctive character. Lastly, as is apparent from paragraphs 46 and 47 above, since the element ‘so’ is the intrinsically distinctive and dominant element of the earlier mark, that consideration tends to minimise the role, within that mark, of the punctuation element, which was, moreover, considered by the Court of Justice to be negligible in regard to the single word element ‘so’ in the circumstances relating to that mark.
59      Therefore, in the light of the foregoing and in view of all of those factors, it must be held that the Board of Appeal was right to find that, for English-speaking and French-speaking consumers in the European Union, the marks at issue have at least an average degree of visual similarity.
–       The phonetic comparison
60      Phonetically, the Board of Appeal found that the fact that the earlier mark, composed of one syllable, was fully contained in the mark applied for gave rise to a certain degree of similarity. Furthermore, it found that the suspension dots and the question mark did not affect the pronunciation of the earlier mark in such a way that it would be phonetically different. It also noted that the word ‘couture’ was the second element of the mark applied for and that it was laudatory and weak for part of the relevant public. The Board of Appeal accordingly concluded that the marks at issue had, at most, an average degree of phonetic similarity.
61      In that regard, it should be noted that, although the earlier mark contains one syllable, namely ‘so’, whereas the mark applied for contains four syllables, namely ‘so’, ‘cou’, ‘tu’ and ‘re’, with the result that its length is different, the signs at issue nonetheless coincide phonetically in their first syllable, which the relevant public will pronounce in the same way. The punctuation marks in the earlier mark are not capable of influencing the way in which that element is pronounced, as their impact is limited solely to the intonation of that element (see, to that effect, judgment of 8 June 2017, SO’BiO ētic, T‑341/13 RENV, not published, EU:T:2017:381, paragraph 50).
62      In those circumstances, and in accordance with the case-law cited in paragraph 57 above, it must be held that the Board of Appeal did not make an error of assessment in finding that the signs at issue were phonetically similar at most to an average degree.
–       The conceptual comparison
63      Conceptually, the Board of Appeal found that, although the earlier mark could be regarded as an introduction to a question, it did not convey any specific meaning in relation to the goods at issue. As regards the element ‘couture’ in the mark applied for, it recalled that this referred, for English-speaking and French-speaking consumers in the European Union, to ‘high fashion’ or to ‘luxury’. It concluded that the impact of that conceptual meaning on the sign applied for was reduced because of its weakness in relation to the goods.
64      In that regard, it should be noted that, at the hearing, in response to a question from the Court, EUIPO acknowledged, as did the applicant, that, despite the Board of Appeal’s failure to reach an express conclusion regarding the conceptual comparison of the signs, it had to be found that there was a conceptual difference.
The likelihood of confusion
65      According to the applicant, the Board of Appeal erred in law by not judging the case on the basis of its own characteristics and according to all the relevant factors.
66      It should 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 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense), T‑109/19, not published, EU:T:2020:162, paragraph 78).
67      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than do marks with less distinctive character (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
68      The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant portion of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations (judgment of 16 June 2021, Chanel v EUIPO – Innovative Cosmetic Concepts (INCOCO), T‑196/20, not published, EU:T:2021:365, paragraph 80; see also, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35).
69      In the present case, the Board of Appeal found that there was a likelihood of confusion at least for consumers in the English-speaking and French-speaking part of the European Union with an average level of attention, in view of the average degree of similarity between the goods at issue, the visual similarity of the marks at issue, but also phonetically, in view of the lack of any strong conceptual meaning which would offset the similarities referred to, the enhanced distinctiveness of the earlier mark and the fact that it was the common element of a family of marks of the intervener. Lastly, the Board of Appeal noted that the similarities of the marks at issue arose from their initial parts and that that common element ‘so’ was the most distinctive.
70      In the first place, and as is apparent from paragraph 22 above, it should be noted that the applicant withdrew its first plea in law by which it claimed that, since the withdrawal of the United Kingdom from the European Union, the evidence in connection with the United Kingdom could no longer substantiate the existence of a family of marks. Consequently, it must be held that the applicant no longer disputes the validity of the abovementioned evidence produced by the intervener in order to rely on the existence of a family of marks composed of the marks SO…? DESIRABLE; SO…? KISS ME; SO…? SINFUL; SO…? WILD and SO…? INSPIRED. Accordingly, it must be pointed out that the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s finding that, with the element ‘so’ at the beginning of the mark applied for, consumers will easily establish a link with the earlier mark and with that family of marks.
71      In the second place, and similarly, it must be pointed out that, by withdrawing the first plea, the applicant no longer disputes the validity of the evidence adduced by the intervener in order to rely on the existence of the highly distinctive character of the earlier mark on account of the relevant public’s recognition of it. However, contrary to EUIPO’s submissions, the applicant’s argument that there must be a combination of a high degree of distinctiveness and reputation in order to conclude that there is a likelihood of confusion remains relevant and is not affected by the applicant’s withdrawal of the first plea.
72      In that regard, it must be borne in mind, in accordance with paragraph 68 above, that the existence of a highly distinctive character as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant portion of the relevant public is familiar with it, without it necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. Therefore, the question of enhanced distinctiveness and that of reputation are two different concepts, as was correctly pointed out in paragraph 84 of the contested decision. Furthermore, it is in no way apparent from the case-law cited by the applicant that a finding that there is a likelihood of confusion presupposes that both a high degree of distinctiveness and a reputation are present. Accordingly, it must be held that the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s assessment that the earlier mark has a highly distinctive character on account of the relevant public’s recognition of that mark.
73      In the third place, the applicant alleges, in essence, an error of law on the part of the Board of Appeal in that it failed to take into account, in order to assess the likelihood of confusion, the extent to which the visual, phonetic and conceptual impressions will primarily have an impact on the relevant public.
74      In that regard, it should be recalled that, according to case-law, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or on the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the good themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 80).
75      In the present case, it must be held that the Board of Appeal took account of the fact that the goods at issue are generally purchased on a self-service basis and that consumers will have the opportunity to inspect the goods visually. Therefore, the Board of Appeal was right to point out the importance of the visual similarity found.
76      It follows from the considerations set out in paragraphs 28 to 75 above, first of all, that the relevant public is the general public with an average level of attention and that the goods at issue are similar to an average degree. Next, as regards the signs at issue, they have at least an average degree of visual similarity, at most an average degree of phonetic similarity, and are conceptually different. However, that conceptual difference is of limited impact given that it stems from the weakly distinctive element ‘couture’. Furthermore, that is offset by the importance attached to visual similarity in view of the fact that the goods at issue are generally sold by means of self-service. Furthermore, it should be noted that the common element ‘so’ is the most distinctive element of the marks at issue and appears at the beginning of each of them, namely in the same position. Lastly, it should be recalled that the earlier mark has a high degree of distinctiveness and belongs to a family of marks.
77      In those circumstances, the Board of Appeal was fully entitled to conclude that the relevant public might be led to believe that the goods at issue come from the same undertaking or from economically linked undertakings when sold under the marks at issue.
78      In the light of all the foregoing considerations, the single plea in law alleging an infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and, consequently, the action must be dismissed.
Costs
79      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
80      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 (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders L’Oréal to pay the costs.
Spielmann
Mastroianni
Brkan
Delivered in open court in Luxembourg on 30 March 2022.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.