JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
19 October 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark MAESELLE – Earlier EU figurative mark MARCELLE – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑718/21,
Katarzyna Kaczorowska, residing in Warsaw (Poland), represented by P. Kurcman, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Groupe Marcelle Inc., established in Lachine, Quebec (Canada),
THE GENERAL COURT (Fifth Chamber),
composed, at the time of the deliberations, of D. Spielmann, President, U. Öberg and I. Gâlea (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By her action under Article 263 TFEU, the applicant, Ms Katarzyna Kaczorowska, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 September 2021 (Case
R 671/2021‑4) (‘the contested decision’).
Background to the dispute
2        On 30 September 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign MAESELLE.
3        The mark applied for covers goods and services in, inter alia, Classes 3 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
–        Class 3: ‘Tints for the hair; non-medicated shampoos; dandruff shampoo; emollient shampoos; shampoo; shampoo; shampoo-conditioners; non-medicated hair shampoos; hair balm; oils for hair conditioning; hair gel; hair wax; hair lighteners; hair tonic; hair creams; hair creams; cosmetics for the use on the hair; hair lotion; hair spray; hair mousse; hair masks; hair powder; hair serums; hair lotion; hair lotion; hair glaze; hair protection lotions; hair preparations and treatments; hair protection gels; hair dyeing preparations; hair-waving preparations; wave-set lotions; hair-washing powder; hair protection creams; hair protection mousse; hair treatment preparations; hair care serums; hairstyling serums; hair strengthening treatment lotions; preparations for protecting coloured hair; gel sprays being styling aids; hair rinses [for cosmetic use]; cosmetic preparations for the hair and scalp; hair care preparations, not for medical purposes; hair preservation treatments for cosmetic use; beauty tonics for application to the body; non medicated skin toners; skin toners; tonics [cosmetic]; beauty tonics for application to the face; facial toners [cosmetic]; toners for cosmetic use; cleansing creams; perfumed creams; exfoliant creams; non-medicated creams; cosmetic creams; creams for tanning the skin; anti-wrinkle cream; barrier creams; conditioning creams; camouflage cream; moisturising creams; anti-freckle creams; creams for firming the skin; face creams for cosmetic use; aromatherapy creams; body cream; hand creams; day creams; night cream; skin cream; washing creams; make-up removing creams; shower creams; bath creams (non-medicated -); creams for cellulite reduction; skin cleansing cream; non-medicated foot cream; skin whitening creams; creams for tanning the skin; creams (non-medicated -) for the eyes; age spot reducing creams; cosmetic hand creams; sun protecting creams [cosmetics]; dermatological creams [other than medicated]; skin cleansing cream [non-medicated]; anti-aging creams; cosmetic creams for dry skin; cold creams for cosmetic use; moisturising creams, lotions and gels; scented body lotions and creams; moisturising skin creams [cosmetic]; face creams for cosmetic use; moisturising body lotion [cosmetic]; anti-aging moisturizers used as cosmetics; cosmetics; non-medicated cosmetics; make-up preparations; cosmetic moisturisers; moisturising concentrates [cosmetic]; moisturising gels [cosmetic]; toning creams [cosmetic]; cosmetics containing keratin; cosmetics containing panthenol; beauty care cosmetics; cosmetics in the form of creams; cosmetic kits; cosmetics in the form of milks; body cream; cosmetics containing hyaluronic acid; skin care oils [cosmetic]; skin care creams [cosmetic]; cosmetics for the treatment of dry skin; moisturising skin lotions [cosmetic]; skin care lotions [cosmetic]; moisturizing milk; body milks; cleansing milks for skin care; milky lotions for skin care; cleansing milk for toilet purposes; make-up removing milks; tanning milks [cosmetics]; balms, other than for medical purposes; body mist; body sprays [non-medicated]; oils for toilet purposes; cleansing oil; mineral oils [cosmetic]; body oils [for cosmetic use]; face oils; oils for cosmetic purposes; facial massage oils; body oils [for cosmetic use]; sun-tanning oils; after-sun oils [cosmetics]; suntanning oil [cosmetics]; distilled oils for beauty care; non-medicated oils; hand oils (non-medicated -); non-medicated shower oils; non-medicated bath oils; skin care oils [non-medicated]; skin balms (non-medicated -); balms, other than for medical purposes; cosmetic moisturisers; conditioning balsam; serums for cosmetic purposes; anti-ageing serum; facial serum for cosmetic use; beauty serums; non-medicated skin serums; body emulsions; day lotion; cosmetic suntan lotions; smoothing emulsions for the skin; sunscreen preparations; facial emulsions; soap free washing emulsions for the body; body powder; hand powders; powder for make-up; face powder; eyebrow powder; face powder (non-medicated -); loose face powder; loose face powder; body powder (non-medicated -); perfumed powder [for cosmetic use]; creamy face powder; pre-moistened cosmetic wipes; tissues impregnated with cosmetics; facial wipes impregnated with cosmetics; moist wipes for sanitary and cosmetic purposes; skin fresheners; moisturizers; impregnated tissues for cleaning [non-medicated, for use on the person]; non-medicated moisturisers; ointments for cosmetic use; face packs; body mask lotion; cosmetic masks; hydrating masks; skin masks [cosmetics]; foot masks for skin care; hand masks for skin care; skin lightening creams; skin lighteners; skin lightening compositions [cosmetic]; eye wrinkle lotions; wrinkle removing skin care preparations; wrinkle-minimizing cosmetic preparations for topical facial use; age retardant gel; anti-aging skincare preparations; skincare cosmetics; facial cleansers [cosmetic]; facial washes [cosmetic]; cosmetic skin enhancers; cosmetic preparations for skin renewal; cosmetic preparations for skin firming; sun protecting creams [cosmetics]; cosmetics for personal use; cosmetics for use in the treatment of wrinkled skin; non-medicated cleansing creams; non-medicated toiletries; creams (non-medicated -) for the body; skin cleansers [non-medicated]; non-medicated body care preparations; non-medicated face care preparations; skin care creams, other than for medical use; non-medicated beauty preparations; salves [non-medicated]’;
–        Class 35: ‘Retailing of cosmetics; wholesaling of cosmetics’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 195/2019 of 14 October 2019.
5        On 14 January 2020, Groupe Marcelle Inc. filed a notice of opposition to registration of the mark applied for in respect of all of the goods and services covered by that mark. On 29 May 2020, it restricted its opposition to the goods and services which have been referred to in paragraph 3 above.
6        The opposition was based on the following earlier EU figurative mark:
7        The earlier mark was filed on 14 September 2018 and registered, under the number 17955385, on 12 January 2019. It covers goods in Class 3 corresponding to the following description: ‘Skincare preparations and cosmetics’.
8        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
9        On 15 February 2021, the Opposition Division upheld the opposition.
10      On 13 April 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
11      By the contested decision, the Board of Appeal dismissed the appeal. In particular, it took the view that it was appropriate to base its assessment on the perception of the German-speaking public. In respect of the goods at issue in Class 3, it found that the general public had a ‘normal’ level of attention. As regards the wholesale services in Class 35, it pointed out that the professional public displayed a higher level of attention. It also found that all the goods in Class 3 were identical to the goods covered by the earlier mark and that all the services in Class 35 were similar to an average degree to the goods covered by the earlier mark. As regards the comparison of the signs at issue, the Board of Appeal took the view that the marks at issue were visually similar to an average degree, that they were ‘highly similar’ phonetically and that a conceptual comparison was not possible. Furthermore, it found that the distinctive character of the earlier mark was ‘normal’ and concluded, in the light of all of those factors, that there was a likelihood of confusion in relation to all of the goods and services which have been referred to in paragraph 3 above.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        annul the Opposition Division’s decision;
–        remit the case to EUIPO so that it can alter the decision on the substance of the case and register the mark applied for;
–        order EUIPO to pay the costs incurred in the proceedings before the Opposition Division, the Board of Appeal and the Court.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15      In support of her single plea, the applicant submits that there is no likelihood of confusion between the marks at issue.
16      EUIPO disputes the applicant’s arguments.
17      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
18      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 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).
19      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).
20      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services 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).
The relevant public
21      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).
22      Furthermore, the relevant public for the purposes of the assessment of the likelihood of confusion consists of users who are likely to use both the goods covered by the earlier mark and those covered by the mark applied for (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38 and the case-law cited).
23      In the present case, the Board of Appeal found that, taking into account the nature of the goods in question, the level of attention of the relevant general public was normal and that, in the case of the wholesale services in Class 35, the professional public displayed a higher level of attention. Furthermore, although it found that the relevant territory was that of the European Union, it took the view that, since the word elements in the signs at issue had no meaning in German and the word element in the earlier mark was highly similar phonetically for the German-speaking public, it was more appropriate to analyse the likelihood of confusion on the basis of the perception of that public.
24      The applicant claims that the Board of Appeal did not make a distinction between the different levels of attention of the general public. She submits that, although that public generally displays an average level of attention, it may also display a higher or lower level of attention. Furthermore, she contends that the average attentive purchaser of cosmetics displays a high, and certainly above-average, level of attention, since they are goods which can affect a person’s health and physical appearance. She also argues that EUIPO did not put forward any arguments to support the claim that the level of attention of the general public will generally be average.
25      EUIPO disputes the applicant’s arguments.
26      It must be pointed out that the applicant does not dispute that the relevant public consists, first, as regards the contested goods in Class 3 and the retail services in Class 35, of the general public and, secondly, as regards the wholesale services in Class 35, of professionals. However, she disputes the finding that the general public will display an average level of attention and claims that the Board of Appeal did not make a distinction between the different levels of attention of the general public.
27      In that regard, it must be stated that it is apparent from the case-law that cosmetic preparations are generally inexpensive everyday consumer goods and that the relevant public’s level of attention when purchasing those goods must be described as average (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, EU:T:2015:353, paragraphs 24 and 25 (not published)).
28      As regards the applicant’s argument that the goods at issue, which she defines as cosmetics, and their sale represent the tastes of the purchaser and can affect a person’s health and physical appearance, with the result that a high level of attention may be expected on the part of the public concerned, it is sufficient to point out, as observed by EUIPO, that, even though those goods are intended to be applied to the human body, the goods in Class 3 covered by the marks at issue are not used for the treatment of diseases and thus constitute everyday consumer goods which are aimed at average consumers who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 13 May 2016, Market Watch v EUIPO – El Corte Inglés (MITOCHRON), T‑62/15, not published, EU:T:2016:304, paragraph 22 and the case-law cited).
29      Consequently, it must be stated that, contrary to what the applicant submits, bearing in mind the nature of the goods at issue, the Board of Appeal, albeit succinctly, substantiated its finding that the general public would display a ‘normal’, that is to say, average, level of attention.
30      The Board of Appeal did not therefore make any error of assessment in pointing out that, taking into account the nature of the goods in question, the level of attention of the general public, in the present case the German-speaking public, would be ‘normal’.
The comparison of the goods and services
31      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account.  Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
32      In the present case, first, the Board of Appeal pointed out that all the contested goods in Class 3 were identical to the goods covered by the earlier mark. Secondly, it found that all the services in Class 35 covered by the mark applied for were similar to an average degree to the goods covered by the earlier mark.
33      In that regard, it must be stated that the applicant has not validly disputed those findings. At the very most, she has
merely stated that there are no similarities between the services covered by the marks at issue. In the light of its unsubstantiated nature, that argument is not capable of calling the Board of Appeal’s findings into question.
The comparison of the signs
34      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).
35      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 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, 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).
36      It must be stated that the earlier mark is a figurative mark consisting of the word ‘marcelle’ written in black standard upper-case letters. As regards the word mark applied for, it must be stated that it consists of the term ‘maeselle’ written in black standard upper-case letters.
37      It is in the light of those considerations that the question of whether the signs at issue are similar must be examined.
The distinctiveness of the elements comprising the signs at issue
38      It must be pointed out that, according to the case-law, for the purposes of assessing the distinctive character of a mark or of an element of a mark, an assessment must be made of the greater or lesser capacity of that mark or that 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 (see 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 and the case-law cited).
39      The Board of Appeal found that the word ‘marcelle’, of which the earlier mark consists, had no meaning for the relevant German-speaking public and that it was distinctive to a ‘normal’ degree. As regards the mark applied for, it took the view that the word ‘maeselle’ written in
black standard upper-case letters had no meaning for the relevant public and that it was distinctive.
40      The applicant submits that the French first name Marcelle is popular throughout the world and that France is known for its very good quality cosmetics. She argues that many undertakings thus use French first names in order to give the impression that the goods come from France and are of good quality. The applicant contends that that element
therefore has a low or very low degree of distinctiveness or even no distinctive character. Furthermore, she submits that the mark applied for has a high degree of inherent distinctiveness and that the word ‘maeselle’ has no meaning, especially in relation to cosmetics.
41      EUIPO disputes the applicant’s arguments.
42      In the present case, as regards the term ‘marcelle’ of which the earlier mark consists, it must be pointed out that that term does not convey any meaning as regards the goods at issue. Furthermore, it must be stated that the applicant has not submitted any evidence which serves to establish that French female first names are generally commonly used in the cosmetics sector in order to create an association with French cosmetics, which are known for their quality. Consequently, the Board of Appeal was right in finding that that term had a ‘normal’, that is to say, average, degree of distinctiveness.
43      As regards the distinctive character of the element ‘maeselle’, it must be pointed out, as observed by the Board of Appeal, that that element has no meaning for the relevant public as a whole. Furthermore, the applicant has not adduced any evidence which is capable of proving the existence of a high degree of distinctiveness. Consequently, the term ‘maeselle’ has an average degree of distinctiveness.
44      It is in the light of those considerations that the mark applied for and the earlier mark, each taken as a whole, must be compared.
The visual comparison
45      The Board of Appeal stated that, from a visual standpoint, the signs at issue corresponded in the sequences of letters ‘ma’ and ‘elle’ and that they differed in the sequences of letters consisting of their third and fourth letters, ‘es’ and ‘rc’ respectively, and in a very slight stylisation of the letters in the earlier mark. Accordingly, it took the view that that stylisation was minimal, that it did not have any unusual or fanciful features, that it was perfectly legible and that no distinctiveness would be attributed to it. Lastly, it found that, taking into account the identity of six out of the eight letters in the word elements, which were placed in the same order, the differences which had been pointed out were not sufficient to counteract the impression of similarity between the signs. Consequently, it concluded that the marks at issue were visually similar to an average degree.
46      The applicant submits that the marks should be compared as a whole and thus the fact that they contain some elements which are identical does not determine whether or not they are similar. Furthermore, she contends that the different sequences of letters, ‘es’ and ‘rc’, in the middle of each word will be liable to catch the consumer’s eye. She submits that, consequently, the marks are visually different.
47      EUIPO disputes the applicant’s arguments.
48      It must be stated that six out of the eight letters in the word elements are identical. They are situated at the beginning and at the end of those elements. Furthermore, they are placed in the same order, whereas the only two letters which differ are in the middle of the words.
49      In that regard, it must be borne in mind that, according to settled case-law,
where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element in the figurative sign is not highly stylised (see judgment of 23 February 2022, Lackmann Fleisch- und Feinkostfabrik v EUIPO – Schuju (Хозяйка), T‑185/21, not published, EU:T:2022:89, paragraph 54 and the case-law cited).
50      In addition, it must be stated that,
as far as marks containing word elements are concerned, consumers generally pay greater attention to the beginning of a mark than to the end. It is admittedly true that that finding cannot apply in all cases and that it cannot, in any event, call into question the principle that the examination as to whether the marks are similar must take account of the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 48 and the case-law cited).
51      Furthermore, it must be pointed out that the Courts of the European Union have also acknowledged that, although the consumer’s attention is often caught by the first part of words, his or her visual attention may focus just as much on the last letters of the signs (see judgment of 13 July 2017, CReMESPRESSO, T‑189/16, not published, EU:T:2017:488, paragraph 49 and the case-law cited).
52      In view of the foregoing and, in particular, of the case-law which has just been cited, it must be held that, in the present case, the presence in the signs at issue of the same element ‘ma’, creates a visual similarity, which is, moreover, reinforced by the presence of the ending ‘elle’ at the end of those signs.
53      Moreover, it must be stated that the stylisation of the letters in the earlier mark is perfectly legible and does not have any unusual characteristics. The overall impression will not therefore be affected by that simple and minimalistic stylisation.
54      Consequently, in the light of all of those factors, it must be stated that the Board of Appeal was right in concluding that the marks at issue were visually similar to an average degree.
The phonetic comparison
55      From a phonetic standpoint, the Board of Appeal took the view that, for the relevant German-speaking public, the signs coincided in the pronunciation of the sequences of letters which they had in common, namely ‘ma’ and ‘elle’, and that they differed slightly in the pronunciation of their third letters, namely ‘e’ and ‘r’, and in the articulation of their fourth letters, namely ‘s’ and ‘c’. However, it found that those phonetic differences were hardly recognisable and were not of such significance that they could prevail over the phonetic similarities between the signs in question. It therefore found that the signs at issue were ‘highly similar’ phonetically.
56      The applicant takes the view that the Board of Appeal erroneously analysed the phonetic aspect of both trade marks. She submits that it is from a phonetic standpoint that the two marks are most different, because the first syllable, which is generally crucial for the perception of a mark, is completely different. She therefore argues that, in the case of the earlier mark, what is involved is the syllable ‘ma’ which ends in a vowel, whereas, in the case of the mark applied for, what is involved is the syllable ‘mar’, with the very voiced consonant ‘r’. She contends that, furthermore, there are differences in the groups of letters in the middle of the two trade marks.
57      EUIPO disputes the applicant’s arguments.
58      In the present case, it must be borne in mind, as was correctly stated by the Board of Appeal, that the signs at issue coincide in the pronunciation of the sequences of letters which they have in common, namely ‘ma’ and ‘elle’, and that they differ in the pronunciation of the third and fourth letters, namely ‘e’ and ‘s’ in the mark applied for and ‘r’ and ‘c’ in the earlier mark. Furthermore, as is clear from paragraph 50 above, the relevant public will generally pay greater attention to the beginning of a mark than to the end. In that regard and contrary to what the applicant submits, it must be pointed out that the beginnings of the signs are identical since those signs coincide in the first two letters ‘m’ and ‘a’.
59      Furthermore, it must be pointed out that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. However, when faced with a word sign, he or she will break it down into word elements which, for him or her, have a specific meaning or which resemble words known to him or her (see
judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 80 and the case-law cited).
60      In that regard, it must be stated that the relevant public will not carry out a detailed analysis of the various syllables of which the signs at issue consist. Accordingly, the difference which has been found to exist between the letters in the centre of those signs – ‘e’ and ‘s’ in the mark applied for and ‘r’ and ‘c’ in the earlier mark – constitutes a minimal difference which is not sufficient to offset the phonetic similarities which have been pointed out. Consequently, the Board of Appeal did not make any error of assessment in finding that those signs were ‘highly similar’ phonetically.
The conceptual comparison
61      The Board of Appeal pointed out that neither of the signs conveyed any concept for the relevant German-speaking public and that, although Marcelle could be a female first name, it could not be anticipated that that public would perceive it as such. Furthermore, it stated that the first name of a person was not a concept and that a conceptual comparison was not possible. In addition, it found that the assertion that Marcelle was a popular female first name was unfounded. Accordingly, it pointed out that the applicant had not provided any evidence to prove that the German-speaking public would perceive the word ‘marcelle’ as a first name and that the mere fact that persons with that first name existed did not prove that the relevant public recognised it. Furthermore, it stated that the fact that a series on the online platform Netflix used the word ‘marcelle’ as the title did not prove the German-speaking public’s general perception of the meaning of that term.
62      The applicant takes the view that the earlier mark represents a female first name which is very popular in the European Union. She argues that many famous women have that first name. Furthermore, she submits that the online platform Netflix has produced a series called ‘Marcelle’. In addition, she contends that, according to a search on the social network Facebook, hundreds of women also have that first name. As regards the mark applied for, the applicant submits that the word ‘maeselle’ does not exist in any language of the European Union and does not therefore have any meaning. She argues that, accordingly, since the Court has acknowledged that names are associated with a concept and the word ‘maeselle’ is not a name, the marks at issue are conceptually different.
63      EUIPO disputes the applicant’s arguments.
64      It must be stated at the outset that Marcelle is a French female first name and that, contrary to what the Board of Appeal found, part of the relevant German-speaking public might perceive it as such.
65      As regards the part of the relevant public which will perceive the word ‘marcelle’ as a first name, it must be pointed out that the case-law is not completely settled on how to carry out a conceptual comparison in the case of signs referring to surnames or first names of persons (see, to that effect, judgment of 16 December 2020, Production Christian Gallimard v EUIPO – Éditions Gallimard (PCG CALLIGRAM CHRISTIAN GALLIMARD), T‑863/19, not published, EU:T:2020:632, paragraph 101).
66      First, it must be pointed out that, according to one line of case-law, the fact that marks contain surnames or first names of persons opens up the possibility of a conceptual comparison, but does not necessarily imply that there is a conceptual similarity, since that can result only from an examination of each individual case (judgment of 16 December 2020, PCG CALLIGRAM CHRISTIAN GALLIMARD, T‑863/19, not published, EU:T:2020:632, paragraph 104).
67      Secondly, a number of judgments of the Court are based on the principle that the relevant public will perceive marks consisting of surnames or first names of persons as having no specific conceptual meaning, unless the first name or surname is particularly well known as being that of a famous person or has a clear and immediately recognisable semantic content (judgments of 8 May 2014, Pedro Group v OHIM – Cortefiel (PEDRO), T‑38/13, not published, EU:T:2014:241, paragraphs 71 to 73; of 11 July 2018, Enoitalia v EUIPO – La Rural Viñedos y Bodegas (ANTONIO RUBINI), T‑707/16, not published, EU:T:2018:424, paragraphs 60 to 68; and of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraphs 81 to 91).
In short, according to that second line of case-law, a conceptual comparison between trade marks consisting of surnames or first names of persons is in principle impossible and neutral, unless there are special circumstances which make that comparison possible, such as, for example, the celebrity of one of the persons concerned (judgment of 16 December 2020, PCG CALLIGRAM CHRISTIAN GALLIMARD, T‑863/19, not published, EU:T:2020:632, paragraph 106).
68      However, it must be pointed out that, according to the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89).
69      Furthermore, it must be borne in mind that, where neither of the signs at issue has any meaning taken as a whole, it must be held that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
70      In the present case, with regard to the part of the relevant public which perceives the word ‘marcelle’ constituting the earlier mark as a first name, it is therefore necessary to distinguish between, first, the situation in which a first name conveys a concept and, secondly, that, following the example of the Board of Appeal, in which a first name does not convey any concept. Furthermore, it must be borne in mind that the mark applied for does not have any meaning.
71      Accordingly, if a first name is regarded as conveying a concept, the conceptual comparison between the signs at issue will result in a conceptual dissimilarity pursuant to the case-law cited in paragraph 68 above. However, if a first name is not regarded as conveying any concept, the conceptual comparison between those signs will then be impossible, as is apparent from paragraph 69 above.
72      It must, however, be pointed out that, at the very least, a non-negligible part of the relevant German-speaking public, which is rarely confronted with the French language, will not recognise the word ‘marcelle’ constituting the earlier mark as a female first name.
73      That finding cannot be called into question by the applicant’s argument that many famous women have the first name Marcelle, that the online platform Netflix has produced a series bearing that first name and that it is possible, via the search engine of the social network Facebook, to obtain a result which consists of numerous women who have that first name. Accordingly, it must, first of all, be pointed out that the applicant has not adduced any evidence which is capable of showing what the relevant German-speaking public’s perception of the meaning of that term is or that that public is familiar with the pianist Marcelle Meyer or the novelist Marcelle Bernstein to which she refers. Next, it must be stated that it cannot be assumed that that public is familiar with a series on the online platform Netflix, particularly because the content of that online platform varies from one country to the next. Lastly, as regards the results of a worldwide search on the social network Facebook, it must be stated that, in addition to the fact that the reliability of those results is relative, they do not attest to the knowledge of the relevant German-speaking public.
74      Consequently, in the light of paragraph 69 above, it must be held that, with regard to the part of the relevant public which does not recognise the word ‘marcelle’ as a first name, the Board of Appeal was right in finding that a conceptual comparison was not possible, since neither the earlier mark nor the mark applied for has any conceptual meaning.
The likelihood of confusion
75      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).
76      The Board of Appeal stated, as regards the comparison of the goods and services at issue, first, that the contested goods in Class 3 were identical to the goods covered by the earlier mark and, secondly, that there was an average degree of similarity between the services in Class 35 and the goods covered by the earlier mark. As regards the comparison of the signs, it pointed out that they were visually similar to an average degree and phonetically similar to a high degree, that a conceptual comparison was not possible and that the degree of inherent distinctive character of the earlier mark was ‘normal’. Consequently, it found that there was a likelihood of confusion on the part of the relevant public.
77      The applicant submits that EUIPO has already registered two different trade marks containing the first name Marcelle for, inter alia, goods in Class 3 and that there are in the European Union 38 registered trade marks containing the word ‘marcelle’ in Classes 3 and 35 of the Nice Classification. Furthermore, she argues that there are also registered trade marks which contain the word elements ‘ma’ and ‘elle’. She contends that the earlier mark therefore has a low or very low degree of distinctiveness or even no distinctive character. Lastly, the applicant submits that, since the marks at issue are different, there is no likelihood of confusion between those marks.
78      EUIPO disputes the applicant’s arguments.
79      In the present case, it must be pointed out, as has been stated in paragraph 42 above, that, since the term ‘marcelle’ which constitutes the earlier mark is meaningless with regard to the goods at issue, it has an average degree of distinctiveness.
80      It is apparent from the foregoing that, as regards the comparison of the goods and services at issue, those goods and services are, in part, identical and, in part, similar to an average degree. Furthermore, the signs at issue are visually similar to an average degree and ‘highly similar’ phonetically and a conceptual comparison is not possible for the part of the relevant public which will not perceive the word ‘marcelle’ as a first name. In addition, it must be stated that, for the part of the relevant public which perceives the word ‘marcelle’ as a first name, any resulting conceptual difference cannot offset the visual and phonetic similarities which have been held to exist. Consequently, it must be held that, in the context of a global assessment of the likelihood of confusion, the Board of Appeal was right in finding that there was such a likelihood of confusion on the part of the relevant public.
81      That finding cannot be invalidated by the applicant’s argument that the earlier mark has a low degree of distinctiveness on account of the presence, first, of the element ‘marcelle’ in a number of trade marks which are registered in the European Union and, secondly, of the elements ‘ma’ and ‘elle’ in various marks in the European Union and in the Member States.
82      The possibility cannot, admittedly, be entirely ruled out that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion which the adjudicating bodies of EUIPO find exists as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds of refusal, the applicant for the EU trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark of the party on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 26 March 2019, Deray v EUIPO – Charles Claire (LILI LA TIGRESSE), T‑105/18, not published, EU:T:2019:194, paragraph 107 and the case-law cited).
83      It is, however, clear in the present case that, first of all, the marks containing the element ‘marcelle’ or the elements ‘ma’ and ‘elle’ relied upon by the applicant and the signs at issue are not identical. Secondly, the applicant has failed to demonstrate that the marks relied upon did indeed coexist on the market. Lastly, in any event, the applicant has not in any way demonstrated that the coexistence of those marks was based on the absence of any likelihood of confusion (see, by analogy, judgment of 26 March 2019, LILI LA TIGRESSE, T‑105/18, not published, EU:T:2019:194, paragraph 108 and the case-law cited).
84      Consequently, a mere list of trade marks containing the elements ‘marcelle’ or ‘ma’ and ‘elle’, without any reference to their use on the market and to any challenge to those marks on account of the existence of a likelihood of confusion, does not permit the inference that the distinctive character of the earlier mark has been reduced in relation to the goods in the cosmetics sector (see, by analogy, judgment of 26 March 2019, LILI LA TIGRESSE, T‑105/18, not published, EU:T:2019:194, paragraph 109 and the case-law cited).
85      The Board of Appeal did not therefore err in finding that there is a likelihood of confusion.
86      In view of all of the foregoing considerations, since the single plea on which the applicant relies in support of the form of order which she seeks cannot be upheld, the action must be dismissed in its entirety, without it being necessary to rule on whether the second and third heads of claim are admissible.
Costs
87      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.
88      Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Ms Katarzyna Kaczorowska to pay the costs.
Spielmann
Öberg
Gâlea
Delivered in open court in Luxembourg on 19 October 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.