JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
20 October 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Strong like nature – Earlier EU figurative mark STRONG NATURE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑352/20,
St. Hippolyt Holding GmbH, established in Dielheim (Germany), represented by M. Gail, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Preduzeće za proizvodnju, unutrašnju i spoljnu trgovinu Elephant Co. d.o.o., established in Belgrade (Serbia), represented by D. Cañadas Arcas, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 March 2020 (Case R 1909/2019-1) relating to opposition proceedings between Preduzeće za proizvodnju, unutrašnju i spoljnu trgovinu Elephant and St. Hippolyt Holding,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov (Rapporteur), President, K. Kowalik-Bańczyk and G. Hesse, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 June 2020,
having regard to the intervener’s opposition to the language of the application lodged at the Court Registry on 10 August 2020,
having regard to the decision of the Court Registry of 14 August 2020 concerning the use of the language of the contested decision as the language of the case pursuant to Article 45(4)(c) of the Rules of Procedure of the General Court,
having regard to the response of EUIPO lodged at the Court Registry on 30 November 2020,
having regard to the response of the intervener lodged at the Court Registry on 13 October 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 17 November 2017, the applicant, St. Hippolyt Holding GmbH, whose company name on that date was St. Hippolyt Nutrition Concepts Marketing- und Vertriebs, 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 following figurative sign:
3        The goods in respect of which registration was sought are, inter alia, in Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Dietary supplements and dietetic preparations; sanitary preparations and articles; medicines for veterinary purposes; medical preparations; nutritional supplements for veterinary use; vitamin preparations; veterinary preparations; food supplements for veterinary use’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 2018/004 of 8 January 2018.
5        On 3 April 2018, the intervener, Preduzeće za proizvodnju, unutrašnju i spoljnu trgovinu Elephant Co. d.o.o., filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of the goods in Class 5 referred to in paragraph 3 above.
6        The opposition was based on the EU figurative mark registered under number 6365233 for ‘dietetic substances adapted for medical use’ in Class 5, represented below:
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 25 June 2019, the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards ‘dietary supplements and dietetic preparations; medicines for veterinary purposes; medical preparations; nutritional supplements for veterinary use; vitamin preparations; veterinary preparations; food supplements for veterinary use’ and, on the other hand, rejected the opposition as regards ‘sanitary preparations and articles’.
9        On 27 August 2019, 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, in so far as it had upheld the opposition.
10      By decision of 27 March 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In essence, it found that the goods covered by the signs at issue, which were the subject of the action, were identical or similar and that those marks were globally similar to an average degree. Thus, in view of the relevant factors and their interdependence, and the ‘principle of imperfect recollection’, there is, for a significant part of the relevant public and despite its high level of attention, a likelihood of confusion as to the economic origin of the goods in question.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It alleges that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of that article.
14      EUIPO and the intervener dispute the applicant’s arguments.
15      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because it is identical with, or similar to, the earlier trade mark, or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. 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 signs 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      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the signs 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 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).
19      It is in the light of those considerations that the Court must assess whether the Board of Appeal was right to find 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
20      The Board of Appeal endorsed the Opposition Division’s assessment that the relevant public for the goods covered by the signs at issue is composed partly of the public at large and partly of professionals from the medical and veterinary sectors, who prescribe those goods. In paragraph 20 of the contested decision, it stated that, given that those goods were related to health, the level of attention could vary from average to high. In paragraph 43 of the contested decision, the Board of Appeal stated that, for a significant part of the relevant public, that level of attention is ‘higher’.
21      According to the applicant, the relevant public is composed of the public at large which cultivates fresh products for use in horticulture or for feeding domestic animals, and professionals operating in the agricultural sector. The degree of attention is average. In addition, the applicant maintains that it is very well known to the average consumer in the equestrian sector, so that its goods are always purchased in a ‘targeted manner’. Furthermore, according to the applicant, since the signs at issue are EU trade marks, the proprietors of which are German, the likelihood of confusion must be examined not only for Germany but also for the whole of the European Union.
22      First, the applicant’s claim that the relevant public is composed of the public at large which cultivates fresh products for use in horticulture or for feeding domestic animals, and professionals operating in the agricultural sector, cannot succeed. It must be stated that some of the categories of goods at issue in the present case are very broad and are not limited to the horticultural or agricultural sector, or to the feeding of animals, with the result that the relevant public cannot be defined on the basis of those sectors. That is the case, for example, for ‘dietary supplements and dietetic preparations’, ‘medical preparations’ or ‘vitamin preparations’, covered by the trade mark application, and ‘dietetic substances adapted for medical use’, covered by the earlier mark. In such circumstances, it is for EUIPO to take into account the average consumer of those categories and not a specific type of consumer of certain goods within a larger category of goods (see, to that effect, judgment of 19 January 2017, Stock Polska v EUIPO – Lass & Steffen (LUBELSKA), T‑701/15, not published, EU:T:2017:16, paragraph 24 and the case-law cited).
23      Secondly, any reputation or renown of the mark applied for has no bearing on the definition of the relevant public and, more generally, on the assessment of whether there is a likelihood of confusion, in contrast with that of the earlier mark (see, to that effect, judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 84). Furthermore, in so far as the applicant seeks to rely on a commercial strategy consisting of using the mark applied for as a slogan for a target category of consumers in the equestrian sector, it is important to note that the relevant public must be defined in the present case by taking into account the category of goods designated in the application for registration of the mark at issue and not according to the consumers targeted by the applicant in the context of such a commercial strategy (see, to that effect, judgment of 29 March 2017, J & Joy v EUIPO – Joy-Sportswear (J&JOY), T‑389/15, not published, EU:T:2017:231, paragraphs 25 to 27).
24      Thirdly, it must be noted that the goods at issue in the present case are essentially dietary supplements and pharmaceutical preparations for human and veterinary use, clearly concerning human and animal health, which is why purchasers of those goods will choose them carefully. Indeed, such products may be intended both for professionals and for final consumers who will show a high level of attention with regard to products and services related to their state of health (see judgment of 8 October 2014, Laboratoires Polive v OHIM – Arbora & Ausonia (DODIE), T‑77/13, not published, EU:T:2014:862, paragraph 25 and the case-law cited) or to that of their animals (judgment of 15 March 2012, Cadila Healthcare v OHIM – Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 36).
25      Consequently, the Board of Appeal’s finding that a significant part of the relevant public has a high level of attention must be approved, but must also be extended to the whole of the relevant public, including both the general public and professionals from the medical and veterinary sectors.
26      Fourthly, it must be stated that, in accordance with the case-law cited in paragraph 18 above, since the earlier mark is an EU trade mark, it is necessary to take into account the perception of the signs at issue by the consumer of the goods in question in that territory. Thus, the fact that the proprietor of that mark is a German company is, contrary to what the applicant suggests, irrelevant in that regard. By contrast, as is apparent from that case-law, the Board of Appeal was entitled to examine the opposition based on that mark by assessing whether the relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 existed in part of the European Union, that is to say focusing on the perception of English-speaking consumers, given that the word elements of the signs at issue belong to the vocabulary of the English language.
27      It follows that the applicant’s arguments relating to the definition of the relevant public adopted by the Board of Appeal must be rejected.
The comparison of the goods
28      In paragraphs 22 and 23 of the contested decision, the Board of Appeal made clear that it endorsed the Opposition Division’s finding that the goods at issue, all in Class 5, were identical or similar, referring to the grounds of that division’s decision and stating that the applicant did not dispute that finding.
29      In that regard, it is apparent from paragraph 8 of the contested decision that ‘dietary supplements and dietetic preparations; nutritional supplements for veterinary use; vitamin preparations; food supplements for veterinary use’ covered by the mark applied for were considered to be identical to the ‘dietetic substances adapted for medical use’ covered by the earlier mark, either because they appear in the same way in both lists, or because the goods covered by the earlier mark include the goods covered by the mark applied for, or overlap.
30      As regards ‘medicines for veterinary purposes; medical preparations; veterinary preparations’ covered by the mark applied for, according to the Board of Appeal, these are used generally to improve the state of health of humans or animals, as is the case for the ‘dietetic substances adapted for medical use’ covered by the earlier mark. Consequently, the general purpose of those goods is similar, since they are all health products. Furthermore, those goods are aimed at the same consumers and can be purchased in the same shops and share the same distribution channels.
31      The applicant does not challenge those considerations with supporting evidence. It merely claims that its distribution channels and those of the intervener are not the same, in so far as it distributes its goods directly to horse owners via its website or through shops specialising in equestrian articles. Furthermore, the applicant states, in various parts of the application, at times that the goods at issue ‘differ sufficiently’, that they are of a ‘low degree of similarity’ or that they are ‘identical’, without, however, putting forward any argument in that regard.
32      As regards the alleged difference in the distribution channels of the goods at issue, that difference, according to the applicant’s argument, does not concern the distribution channels of the goods concerned, as referred to in the application for registration of the contested mark and in the registration of the earlier mark, but the distribution channels of the goods which it actually marketed. According to the case-law, the similarity of the goods covered by the conflicting signs must not be assessed in relation to the goods actually marketed under those signs (see, to that effect, judgment of 29 March 2017, J&JOY, T‑389/15, not published, EU:T:2017:231, paragraph 34). Consequently, that argument advanced by the applicant is unfounded.
33      As regards the applicant’s statements in reference to the different degrees of similarity of the goods in question, as EUIPO rightly points out, these are contradictory and must be rejected as inadmissible, since they do not meet the requirements for clarity and precision laid down in the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which applies to the procedure before the General Court by virtue of the first paragraph of Article 53 thereof, and of Article 177(1)(d) of the Rules of Procedure of the General Court (see, to that effect, judgment of 17 January 2019, ETI Gıda Sanayi ve Ticaret v EUIPO – Grupo Bimbo (ETI Bumbo), T‑368/18, not published, EU:T:2019:15, paragraph 19).
34      Accordingly, the applicant’s arguments relating to the comparison of the goods at issue must be rejected.
Visual, phonetic and conceptual comparison of the signs at issue
35      The applicant disputes the Board of Appeal’s assessment of the visual, phonetic and conceptual aspects of the comparison of the signs at issue and, consequently, its assessment of the overall impression created by those signs.
36      EUIPO and the intervener dispute the applicant’s arguments.
37      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 (judgment of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43 and the case-law cited).
38      In addition, the global assessment of the likelihood of confusion must, in relation to 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 that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
39      In the present case, it should be recalled that the signs at issue are the following:
Mark applied for
Earlier mark
40      The Board of Appeal did not take the view, before carrying out a visual, phonetic and conceptual comparison of the signs at issue, that they contained a dominant element and did not identify the existence of non-distinctive elements. Nor does the applicant put forward any arguments to that effect.
41      That said, it should be noted that the mark applied for is composed of three word elements and lacks any specific figurative element. The word element ‘strong’ appears in the upper part of the sign and appears in black letters, in italics, in a standard typeface, and its first letter is a capital letter. The elements ‘like’ and ‘nature’ appear below that first element, in a smaller size, and are depicted in black letters and in a standard typeface.
42      The earlier mark is composed of two word elements and figurative elements. In the left part of the sign there is a blue square in which a green tree edged in white is represented. The word elements ‘strong’ and ‘nature’ appear on the right of that figurative element and occupy the greater part of the earlier mark. The element ‘strong’, represented in capital letters and in a standard blue font, is placed above the element ‘nature’, which is of the same size, is in the same font and is coloured green.
43      In the first place, as regards the visual aspect of the signs at issue, the Board of Appeal found, in paragraph 28 of the contested decision, as regards the word elements of the signs at issue, that the elements ‘strong’ and ‘nature’ coincide, appear in the same order and are placed one on top of the other. The only difference between the word elements of the signs at issue is the preposition ‘like’ in the mark applied for. By contrast, according to the Board of Appeal, the signs at issue have a clearly different appearance since the mark applied for consists exclusively of word elements whereas the earlier mark is also composed of visible figurative elements, namely the tree, the square and the colours blue and green. Thus, in so far as consumers are more able to recognise the marks visually, because of word elements rather than by images or figurative elements, the fact that the signs display significant similarities in their word elements has more influence on the comparison than the differences in the figurative elements. Consequently, the Board of Appeal found, in essence, that there was a low degree of visual similarity between the signs at issue.
44      The applicant claims that the signs at issue are not visually similar. It submits that the earlier mark is a figurative sign composed of a single word and suggests that the ‘syllables and letter combinations’ of the signs at issue are arranged in a visually different way and that the configuration of the signs at issue is different.
45      In that regard, it should be noted that, first, as stated in paragraph 42 above, the earlier mark contains two word elements, not just one, which occupy the greater part of the sign and are clearly visible. Secondly, the word elements of the signs at issue, ‘strong’ and ‘nature’, are identical and positioned in a similar way in the structure of those signs, that is to say ‘strong’ above ‘nature’.
46      As to the remainder, the applicant does not in any way explain what ‘syllables and letter combinations’ arranged differently it refers to, nor does it specify what those alleged differences are in that regard. That complaint must therefore be rejected as inadmissible since it does not meet the requirements of clarity and precision referred to in paragraph 33 above.
47      By contrast, it must be pointed out that the Board of Appeal took account of the differences between the signs at issue by pointing out that the mark applied for contained one word element more than the earlier mark, namely the preposition ‘like’ and that the appearance of the two marks was ‘clearly different’, on account of the visual effect produced by the figurative elements of the earlier mark. However, it also correctly pointed out similarities between the signs at issue, consisting of the coincidence of the two clearly visible word elements ‘strong’ and ‘nature’, positioned similarly in the structure of those signs.
48      Thus, the Board of Appeal was right to conclude that there was a low degree of visual similarity within the overall impression created by those marks.
49      In the second place, as regards the phonetic aspect of the signs at issue, the Board of Appeal found, in paragraph 35 of the contested decision, that there was a high degree of phonetic similarity between the signs at issue on the ground that two of their pronounced elements are pronounced identically, namely ‘strong’ and ‘nature’, the only difference being the syllable ‘like’ which, in the mark applied for, would be pronounced between those elements.
50      The applicant does not dispute the Board of Appeal’s finding in a substantiated and comprehensible manner. In this respect, it merely relies on the judgment of 22 September 2011, ara v OHIM – Allrounder (A with two triangular designs) (T‑174/10, not published, EU:T:2011:519). However, the case which gave rise to that judgment is in no way comparable to the present one. In that judgment, the Court found that the contested mark was characterised by a very particular graphic design and that, consequently, the relevant public would tend to describe it and not to pronounce it, so that a phonetic comparison was excluded (see, to that effect, judgment of 22 September 2011, A with two triangular motifs, T‑174/10, not published, EU:T:2011:519, paragraph 32). By contrast, in the present case, both the mark applied for and the earlier mark contain word elements that are clearly identifiable and pronounceable, with the result that the phonetic comparison between the signs at issue is entirely relevant.
51      It should also be pointed out that the signs at issue have in common the pronunciation of the words ‘strong’ and ‘nature’, in the same order and having a similar rhythm of pronunciation, which results in them sounding very similar to one another. Therefore, the Board of Appeal was right to conclude that there was a high degree of phonetic similarity of the signs at issue.
52      In the third place, as regards the conceptual aspect of the signs at issue, the Board of Appeal found that the concepts conveyed by the expressions ‘strong like nature’ and ‘strong nature’, taken on the basis of their meaning in English, are very similar, in so far as the adjective ‘strong’ and the noun ‘nature’ are the meaningful elements, whereas the preposition ‘like’ in the mark applied for has no added value as regards that message. Consequently, the Board of Appeal found that there was a high degree of conceptual similarity between the signs at issue.
53      The applicant does not put forward any specific argument to cast doubt on that conclusion. It suggests only that, conceptually, there is no likelihood of confusion. That claim is not, however, substantiated by concrete evidence capable of calling into question the Board of Appeal’s finding as to the high degree of conceptual similarity between the marks at issue and must therefore be rejected for the reasons already set out in paragraph 33 above.
54      It follows that the Board of Appeal was right to conclude that the signs at issue are similar overall, since, from the point of view of the relevant public, there was a low degree of visual similarity between them and a high degree of phonetic and conceptual similarity.
Distinctiveness of the earlier mark
55      The Board of Appeal found, like the Opposition Division, that the inherent distinctive character of the earlier mark was average on account of the particular combination of word elements, figurative elements and colours.
56      The applicant submits that the earlier mark has a weak, or even non-distinctive, character and that, consequently, even slight differences between the signs at issue are sufficient to create a different overall impression of that mark.
57      As a preliminary point, it should be noted that the fact that a mark has been registered means that it has a minimum of inherent distinctiveness, since Article 7(1)(b) of Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 7(1)(b) of Regulation 2017/1001) precludes registration of a mark which is devoid of distinctive character. A trade mark applicant cannot, in the context of opposition proceedings, call into question the validity of that earlier mark. As regards, more specifically, an earlier EU trade mark, as in the present case, that validity can be called into question only in the context of an application for a declaration of invalidity under Article 59 of Regulation 2017/1001 (judgment of 9 September 2020, Gothe and Kunz v EUIPO – Aldi Einkauf (FAIR ZONE), T‑589/19, not published, EU:T:2020:397, paragraph 72).
58      In the present case, the Board of Appeal did not make an error of assessment in finding that the earlier mark had an average degree of distinctiveness, thereby endorsing the Opposition Division’s findings. In that regard, the Board of Appeal rightly held that, despite the presence of elements making up the earlier mark which, taken individually, could be regarded as having a weak distinctive character, the positioning and particular combination of those elements attributed to that mark an average distinctive character. The graphic presentation of the figurative elements and the word elements, as well as the colour scheme used in the earlier mark, are capable of conferring on that mark a normal degree of inherent distinctiveness.
59      The applicant does not put forward any substantiated argument to invalidate that finding and to establish that the earlier mark has a weak, or even non-distinctive, character.
60      In those circumstances, it must be concluded that the Board of Appeal was correct in finding that the earlier mark had an average degree of distinctiveness.
The likelihood of confusion
61      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 the goods or services designated 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).
62      Furthermore, it follows from well-established case-law that, in the context of the overall assessment of the likelihood of confusion, account must be taken of the average consumer’s imperfect recollection of the marks concerned (see order of 12 January 2017, Staywell Hospitality Group v EUIPO, C‑440/16 P, not published, EU:C:2017:16, paragraph 5 and the case-law cited).
63      In the present case, the Board of Appeal found that, taking into account the relevant factors and their interdependence, and the ‘principle of imperfect recollection’, there was a likelihood of confusion for a significant part of the relevant public as regards the commercial origin of the goods at issue bearing the signs at issue.
64      The applicant submits that the overall impressions of the signs at issue are different, which excludes the likelihood of confusion. The difference in the colours of the signs at issue and the other visual, phonetic and conceptual differences are sufficient to rule out any likelihood of confusion.
65      EUIPO and the intervener contest those arguments.
66      First, it must be observed that, as is apparent from paragraphs 28 to 34 above, the goods covered by the mark applied for and those covered by the earlier mark were correctly found to be identical or similar. Secondly, as is apparent from paragraphs 35 to 54 above, the signs at issue have a low degree of visual similarity and a high degree of phonetic and conceptual similarity, and are therefore similar overall.
67      Although the applicant claims that the differences in the overall impressions created by the signs at issue are capable of counterbalancing the similarities found, the only specific argument which it puts forward in that regard is to claim that there is a difference in the colours of the signs at issue. However, first, the graphic representation of the letters in different colours is not a determining factor capable of excluding the impression of similarity between two figurative signs which broadly coincide, as in the present case, in their verbal elements (see, to that effect, judgment of 24 October 2017, Keturi kambariai v EUIPO – Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 101 and the case-law cited). Secondly, the figurative element, consisting, in essence, of a green tree, edged in white in a blue square, is not capable, by itself, of diverting the relevant public’s attention away from the word elements of the earlier mark, which are perfectly legible, are large and occupy the major part of that mark, and which coincide with two of the three word elements of the mark applied for.
68      Moreover, given that the distinctive character of the earlier mark is considered to be average, the relevant public could, as the Board of Appeal correctly points out, reasonably think that the mark applied for is a version of the earlier mark without figurative elements. The mere fact that the relevant public’s level of attention is high cannot, in the circumstances of the present case, invalidate that conclusion.
69      Furthermore, the applicant refers to three judgments which, in its view, demonstrate that even small differences between the conflicting signs would be sufficient for the sign, for which registration is sought, to produce a different overall impression. The judgments concerned are those of 22 September 2011, A with two triangular motifs
(T‑174/10, not published, EU:T:2011:519); of 21 November 2018, Shenzhen Jiayz Photo Industrial v EUIPO – Seven (SEVENOAK)
(T‑339/17, not published, EU:T:2018:815); and of 29 November 2018, Septona v EUIPO – Intersnack Group (welly)
(T‑763/17, not published, EU:T:2018:861). However, contrary to what the applicant claims, in those judgments the differences between the signs at issue noted by the Court were not described as ‘small’. On the contrary, those differences created different overall impressions. In the present case, the Court considers that, for the reasons set out in particular in paragraphs 66 to 68 above, the differences between the signs at issue are not sufficient to produce different overall impressions. In any event, the applicant does not explain why it considers that the conclusions to be drawn from those judgments can be applied to the present case. Moreover, as EUIPO correctly submits, the signs which were the subject of those judgments and their factual context are not in any way comparable to those forming the subject matter of the present dispute.
70      In the light of all the foregoing considerations, and in accordance with the principle of interdependence referred to in paragraph 61 above, it must be concluded that the Board of Appeal was right to find that there was a likelihood of confusion as to the origin of the goods on the part of the relevant public. It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected and that, therefore, the action must be dismissed.
Costs
71      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.
72      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 (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders St. Hippolyt Holding GmbH to bear the costs.
Kornezov
Kowalik-Bańczyk
Hesse
Delivered in open court in Luxembourg on 20 October 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.