JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
2 February 2022 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark VITABLOCS TriLuxe forte – Earlier EU word mark TRILUX – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑202/21,
Vita Zahnfabrik H. Rauter GmbH & Co. KG, established in Bad Säckingen (Germany), represented by A. Theis and F. Hauck, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and V. Ruzek, acting as Agents,
defendant,
the other party in the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
VIPI Indústria, Comércio, Exportação E Importação De Produtos Odontológicos LTDA, established in Pirassununga (Brazil), represented by J. Blum, Solicitor,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 9 February 2021 (Case R 818/2020‑4) relating to opposition proceedings between VIPI Indústria, Comércio, Exportação E Importação De Produtos Odontológicos and Vita Zahnfabrik H. Rauter,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and R. Norkus, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 April 2021,
having regard to the response of EUIPO lodged at the Court Registry on 30 June 2021,
having regard to the response of the intervener lodged at the Court Registry on 25 June 2021,
having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written procedure and having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule without an oral part of the procedure,
gives the following
Judgment
Background to the dispute
1        On 9 December 2015, the applicant, Vita Zahnfabrik H. Rauter GmbH & Co. KG, obtained from the World Intellectual Property Organisation (WIPO) the international registration No 1346271 designating, inter alia, the European Union for the word sign VITABLOCS TriLuxe forte.
2        On 25 May 2017, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of that sign.
3        The goods in relation to which registration was sought come within Classes 5 and 10 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 descriptions for each of those classes:
–        Class 5: ‘Dental ceramic composition in the form of blocks for preparing ceramic restorations; ceramic dental materials; dental ceramics for preparing dental prostheses; ceramic material for stopping teeth and dental wax; ceramic for dental prostheses or dental ceramic materials; adhesives for affixing prostheses, namely dental cement and dental adhesives for bonding tooth stumps or implants for use in dental restoration’;
–        Class 10: ‘Goods related to dental medicine, namely artificial teeth made of dental ceramics; dental apparatus and instruments, especially color rings for dental use’.
4        The international registration designating the European Union was published in European Union Trade Marks Bulletin No 2017/098 of 26 May 2017.
5        On 26 September 2017, the intervener, VIPI Indústria, Comércio, Exportação E Importação De Produtos Odontológicos LTDA, filed a notice of opposition, 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)), and, more specifically, pursuant to Article 41 of Regulation No 207/2009, read in conjunction with Article 156 thereof (now Article 46 and Article 196 of Regulation 2017/1001, respectively), against registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU word mark No 3794443, TRILUX, registered on 30 April 2008 and duly renewed, covering goods in Classes 5 and 10 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘Dental abrasives; adhesives for dentures; dental amalgams; moulding wax for dental use; dental cements; adhesives for dentures; dental mastics; dental varnishes; preparations to facilitate teething; dental wax; alloys of precious metals for dental purposes; moulding wax for dental use; material for stopping teeth; resin for dental purposes’;
–        Class 10: ‘Dentures; artificial teeth; of artificial teeth (prostheses); dental burs; pins for artificial teeth; prostheses’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 3 May 2018, in accordance with the applicant’s request dated 13 April 2018 and Article 47(2) of Regulation 2017/1001, EUIPO asked the intervener to provide proof of use of its earlier mark for all the goods on which the opposition was based.
9        On 8 October 2018, the intervener adduced evidence to that effect.
10      By decision of 24 January 2020, the Opposition Division rejected the opposition in its entirety. It concluded that, due to the differences between the signs, there was no likelihood of confusion, even for identical goods.
11      On 1 May 2020, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision.
12      By decision of 9 February 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision on the ground that there was a likelihood of confusion on the part of the relevant public in respect of all of the goods for which protection in the European Union was sought.
Forms of order sought
13      The applicant claims that the Court should:
–        amend the contested decision by dismissing in its entirety the opposition brought against the international registration in so far as it designates the European Union and order the intervener to pay the costs incurred before EUIPO;
–        in the alternative, annul the contested decision;
–        order EUIPO to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      The intervener contends that the Court should:
–        confirm the contested decision;
–        order the applicant to pay the costs of the proceedings before the General Court.
Law
16      In accordance with Article 151 of Regulation No 207/2009 (now Article 189 of Regulation 2017/1001), an international registration designating the European Union is, from the date of its registration or from the date of the subsequent designation of the European Union, to have the same effect as an application for an EU trade mark.
17      Given the date of the international registration designating, inter alia, the European Union, namely 9 December 2015, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, in its original version (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). In addition, 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.
18      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties in their 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, which is identical in content.
19      In support of its action, the applicant puts forward a single plea alleging misapplication of Article 47(5) and Article 8(1)(b) of Regulation 2017/1001. Its plea consists of three complaints, relating, first, to the assessment of visual similarity; secondly, to the assessment of phonetic similarity; and, thirdly, to the global assessment of the likelihood of confusion.
20      EUIPO and the intervener dispute the applicant’s arguments.
21      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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 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 mark.
22      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, 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 taking 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 (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). Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater 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, 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 74).
23      For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his or her trust in the imperfect picture that he or she has retained of them. It should also be taken into account 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 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 33 and the case-law cited).
24      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 (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).
25      In addition, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation which they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier mark, and in particular its reputation, must therefore be taken into account in assessing whether there is a likelihood of confusion (see judgment of 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraphs 32 and 33 and the case-law cited; judgment of 28 October 2010, Farmeco v OHIM – Allergan (BOTUMAX), T‑131/09, not published, EU:T:2010:458, paragraph 67).
26      Finally, it must be borne in mind that, in order for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, 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).
27      It is in the light of the principles set out in paragraphs 21 to 26 above that the applicant’s single plea in law must be examined in the present case.
The distinctive character of the earlier mark
28      As the Board of Appeal found in paragraph 47 of the contested decision – without that finding being disputed by the parties – the intrinsic distinctive character of the earlier mark must be regarded as normal in relation to the goods at issue, given that the word ‘trilux’ has no meaning for the whole of the relevant public. Nor do the parties contest the Board of Appeal’s finding that, in the circumstances of the present case, it was not for the Board of Appeal to assess the distinctive character acquired through the use of the earlier mark.
The relevant territory
29      In paragraph 37 of the contested decision, the Board of Appeal found that, given that the earlier mark was an EU trade mark, the relevant territory taken into consideration in assessing whether there was a likelihood of confusion was the territory of the European Union. In the light of the case-law referred to in paragraph 26 above, the Board of Appeal acted correctly in finding, in paragraph 38 of the contested decision, that, in accordance with the unitary character of the EU trade mark system, a likelihood of confusion in part of the European Union was sufficient for an opposition to be upheld. The Board of Appeal specifically targeted the relevant public as being the Italian-speaking public and the Spanish-speaking public. Therefore it is with regard to that public that the likelihood of confusion must be assessed, bearing in mind that the existence of such a likelihood of confusion in one of those two categories of public, as defined by the Board of Appeal, is sufficient to preclude the protection of the international registration designating the European Union from being recognised in the same way as the protection granted to an EU trade mark.
The relevant public and its level of attention
30      The applicant does not dispute the Board of Appeal’s assessment, in paragraph 37 of the contested decision, that, first, the goods at issue are aimed at dental professionals, who will display a high level of attention, and, second, even if some of the goods are intended for the general public, that public will also display a high level of attention, given that the goods relate to appearance and health. Moreover, there is nothing in the file that can call that assessment into question.
Comparison of the goods
31      In the present case, the Board of Appeal found, in essence, in paragraphs 39 to 44 of the contested decision, that the goods covered by the international registration at issue were all similar, highly similar or identical to the goods protected by the earlier mark for which genuine use had been proven in accordance with Article 47(2) of Regulation 2017/1001 (‘artificial teeth’ and ‘of artificial teeth (prostheses)’ in Class 10). There is no reason to cast doubt on that finding, which, moreover, is not disputed by the parties.
Comparison of the signs
32      For the purposes of Article 8(1)(b) of Regulation No 207/2009, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see, to that effect, judgment of 25 November 2003, Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), T‑286/02, EU:T:2003:311, paragraph 38 and the case-law cited).
33      The global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. 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 proceed to analyse its various details (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35).
34      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. 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. 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 (see judgment of 12 November 2008, Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, EU:T:2008:481, paragraph 40 and the case-law cited).
35      In the present case, as regards the distinctive character of the elements making up the international registration at issue, in the first place, the Board of Appeal correctly held, in paragraphs 46 to 50 of the contested decision, that, whereas that international registration was composed of the three word elements ‘vitablocs’, ‘triluxe’ and ‘forte’, the word element ‘forte’ played only a secondary role in the comparison of the signs at issue, because it meant ‘strong’ in, inter alia, Italian. In the light of the findings made in paragraph 29 above, it is necessary to assess the Italian-speaking public’s perception of the signs at issue, without it being necessary to assess also the Board of Appeal’s findings concerning the Spanish-speaking public and the merits of the applicant’s claim that the word ‘forte’ does not exist in Spanish.
36      Furthermore, the Board of Appeal also acted correctly in rejecting, in paragraph 48 of the contested decision, the applicant’s contention that the word ‘forte’ was distinctive because it was unclear as to what quality of the goods that word describes. It should be stated, as the Board of Appeal observed, that that word will be immediately understood as meaning that the goods themselves are strong, and thus durable. Therefore, it will be regarded as descriptive of the goods and not as a distinctive element, at least by the Italian-speaking public.
37      In the second place, as regards the distinctive character of the word element ‘vitablocs’ of the international registration at issue, first, the Board of Appeal correctly stated, in paragraph 50 of the contested decision, that it was likely that the relevant public, composed of specialists in the field of dentistry, would immediately perceive the word ‘blocs’ as an indication of dental blocks, ‘whether acrylic or ceramic’, used to make dental prostheses, given that the goods at issue consist of, or relate closely to, such goods. Second, the element ‘vita’ will be seen as distinctive, as the Board of Appeal correctly found, since it has no immediate descriptive or laudatory meaning in relation to the goods, and the combination as a whole thus enjoys a normal distinctive character. Accordingly, as stated in the contested decision, account must be taken of the fact that, along with the word element ‘triluxe’, the element ‘vitablocs’ is one of the two distinctive elements of the international registration at issue.
38      In those circumstances, the Board of Appeal found, in paragraph 51 of the contested decision, that the word signs at issue were visually similar to an average degree. In essence, it rejected the applicant’s claim that the word ‘triluxe’ was less visible or visually less eye-catching because it was in the middle of the sign. According to the Board of Appeal, there was no composite element in the sign under consideration in which the word at issue may somehow not be as immediately perceived. It maintains that the three word elements of the international registration at issue had to be taken into consideration, since they were all visible, and account should also be taken of the descriptive and laudatory character of the element ‘forte’, which was non-distinctive with regard at least to the Italian- and Spanish-speaking public. The Board of Appeal also took account of the fact that the distinctive word element ‘vitablocs’ had no counterpart in the earlier mark, but that the other distinctive element, ‘trilux’, was almost identical to the earlier mark. Furthermore, according to the Board of Appeal, while the word ‘forte’ was not negligible and created a slight visual difference between the signs, it would not be perceived as being the distinctive part of the international registration at issue.
39      The applicant claims that the word element ‘vitablocs’ has a greater impact on the overall impression created by the international registration at issue than its word element ‘triluxe’ because, first, it is placed at the beginning, that is to say, in the part of the sign on which consumers tend to focus; secondly, it is significantly longer; and, thirdly, all of its letters are written in upper-case letters, unlike those of ‘triluxe’, with the result that the consumer will pay greater attention to the word element ‘vitablocs’. Thus, it argues, there is, if at all, only a low degree of visual similarity between the signs at issue.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      In that regard, in the first place, it should be noted that, as EUIPO correctly argues before the Court, it cannot be inferred solely from the position of the word element ‘vitablocs’, which precedes, in the international registration at issue, the word element ‘triluxe’, that the first of those two elements more particularly holds the attention of the relevant consumer. Although, according to the case-law, the first component of word marks may be more likely to catch the consumer’s attention than the following components, that consideration cannot apply in all cases. Moreover, the Court has already held, in relation to an argument that the consumer would be inclined to abbreviate the mark applied for so as to retain more of one word than another because of the initial position of the first word in that mark, that, while, in order to assess the dominant character of one or more components of a composite trade mark, account could, accessorily, be taken of the relative position of the various components within the arrangement of such a mark, the relative position does not necessarily make one element of a mark dominant while removing all significance, in the overall impression, from the other elements which are components of that mark (see 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 84 and the case-law cited).
42      In the present case, it must be held that, in the absence of a composite element in which a word might not be perceived immediately, the three word elements contained in the sign covered by the international registration at issue are visible, and so they must all be taken into consideration in the visual comparison of the signs at issue, even though the last element ‘forte’ is not perceived as being the distinctive part of the sign covered by the international registration for the reasons stated in paragraph 38 above.
43      In the second place, it must be pointed out that the consideration of the similarity of the signs at issue takes into account those marks as a whole, as they are registered or applied for. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection resulting from the registration of a word mark thus relates to the word indicated in the application for registration and not to the particular graphic or stylistic aspects which that mark might possibly have (see, to that effect, judgment of 3 February 2010, Enercon v OHIM – Hasbro (ENERCON), T‑472/07, not published, EU:T:2010:25, paragraph 34 and the case-law cited). Accordingly, the fact that the element ‘vitablocs’ is written in upper-case letters is not relevant for the purposes of determining its greater impact on the visual comparison of the signs at issue.
44      In those circumstances, it must be concluded that the Board of Appeal correctly found that the word signs at issue were visually similar to an average degree (see paragraph 38 above). In particular, the Board of Appeal correctly assessed the significance of the various word elements of the international registration at issue from a visual point of view, and correctly observed that one of its distinctive elements, the word ‘triluxe’, was almost identical to the earlier mark TRILUX.
45      From a phonetic point of view, it is apparent from paragraphs 52 and 53 of the contested decision that, according to the Board of Appeal, the international registration ‘will be pronounced as [vi|ta|ˈbläk| ˈtrī|ˈlu̇ks| fȯr-|ˌtā]’ and the earlier sign as ‘[ˈtrī|ˈlu̇ks]’. The second element of the international registration at issue is, in its view, phonetically identical to the earlier sign. While certain elements of the international application at issue have no counterpart in the earlier sign, this does not, according to the Board of Appeal, outweigh the similarities. Moreover, where consumers who understand Spanish or Italian would not pronounce the element ‘forte’ due to its descriptive and non-distinctive character, the phonetic similarities would be higher.
46      The applicant claims, in essence, that the way in which the Board of Appeal came to the conclusion that the word elements ‘trilux’, on the one hand, and ‘triluxe’, on the other, were phonetically identical is unclear. There are, in its opinion, no facts to support the view that the last letter ‘e’ has no impact on the pronunciation of the word ‘triluxe’, at least as far as the relevant public, namely the Italian- and Spanish-speaking public, is concerned, which is the public on which the Board of Appeal focused. According to the applicant, there is no Spanish word ‘forte’ and the letter ‘e’ at the end of a word is usually intonated in the Italian language, as in the word ‘forte’. Moreover, a finding of an average degree of phonetic similarity is not justified, according to the applicant, since the dissimilar element ‘vitablocs’, consisting of three syllables, takes longer to pronounce than the shorter element ‘triluxe’, consisting of only two syllables, and since the international registration at issue has a third word element ‘forte’, which has no counterpart in the opposing trade mark.
47      EUIPO and the intervener dispute the applicant’s arguments.
48      In that regard, it must be noted that, as regards the Italian-speaking public (see paragraph 35 above), the difference in the pronunciation of the word elements ‘trilux’ and ‘triluxe’, although not negligible, is nevertheless weak. In those circumstances, the Board of Appeal rightly found, in paragraphs 52 and 53 of the contested decision, that there was a phonetic similarity between the signs at issue, which, in certain circumstances, in particular if certain Italian-speaking consumers did not pronounce the word element ‘forte’, could even be higher, which it summarised, in paragraph 57 of the contested decision, by the words ‘at least [an] average degree’ of phonetic similarity. Furthermore, contrary to what the applicant claims, the presence, in the sign covered by the international registration, of the word element ‘vitablocs’, consisting of three syllables and taking longer to pronounce than the word element ‘triluxe’, does not call into question the similarity based on the fact that the pronunciation of the word elements ‘trilux’ and ‘triluxe’, present in the signs at issue, is almost identical.
49      Finally, from a conceptual point of view, the applicant did not raise any objection to the Board of Appeal’s assessment, in paragraph 54 of the contested decision, that, since the two signs have no clear meaning, no comparison could be made. Moreover, there is nothing in the file that is capable of calling that assessment into question.
50      In the light of the foregoing, the applicant’s complaints concerning the comparison of the signs at issue must be rejected in their entirety.
The overall assessment of the likelihood of confusion
51      As is apparent from paragraphs 57 to 59 of the contested decision, first, the Board of Appeal relied, in its assessment of the likelihood of confusion, in essence, on the fact that the ‘co-dominant’ element of the international registration at issue was almost identical to the earlier sign and on the overall visual and phonetic similarities found to exist (see paragraphs 38, 44 and 48 above). Secondly, it stated that some of the goods in question were identical and others were similar to varying degrees. Thirdly, it took into consideration the normal inherent distinctiveness of the earlier mark. Fourthly, it took into account the high level of attention of the relevant public, that is to say, the Italian-speaking public and the Spanish-speaking public. Fifthly, the Board of Appeal stated that the international registration at issue could be perceived as including, at the beginning, an ‘umbrella’ mark. Finally, it found that it had not been demonstrated that there was peaceful coexistence between the international registration at issue and the earlier mark, based on the absence of a likelihood of confusion on the part of the relevant public.
52      It must be stated that none of the applicant’s claims submitted before the Court invalidates the Board of Appeal’s findings, summarised in paragraph 51 above.
53      The applicant has argued that the Board of Appeal’s finding with regard to the likelihood of confusion was not only wrong because it erroneously assumed an average degree of similarity between the marks. In the applicant’s view, the Board of Appeal, in its view, also failed to explain why a high similarity between the opposing trade mark and a co-dominant element in the contested trade mark could give rise to a likelihood of confusion.
54      The applicant claims that, according to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), a likelihood of confusion can arise in such a case only if the earlier trade mark is adopted in the contested composite trade mark in such a way that it retains an independent distinctive role in the contested trade mark. According to the applicant, a co-dominant element, and a fortiori a non-dominant element, generally does not have an independent distinctive role in a composite mark, given that the average consumer usually perceives a mark as a whole. Therefore, according to the applicant, there must be particular circumstances, such as, for example, the combination of an earlier trade mark with a well-known company name, which justify the conclusion that a co-dominant or non-dominant element has an independent distinctive role. The applicant argues that the Board of Appeal failed to set out such circumstances.
55      The applicant claims that the mere statement that a distinctive word placed before another distinctive word may well be perceived by the relevant public as an ‘umbrella’ brand is very general. The acceptance of such general reasoning would mean that any distinctive element which is placed second after another distinctive element is deemed to have an independent distinctive role. This, it argues, would undermine the principle that the trade mark comparison must be made by examining each of the trade marks in question as a whole, and it would not be in line with the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), which requires particular circumstances for the finding of an independent distinctive role.
56      In that regard, first of all, it should be noted that it is apparent from paragraph 32 of the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), that a finding that there is a likelihood of confusion cannot be subject to the condition that the overall impression produced by the composite sign must be dominated by the part of it which is represented by the earlier mark.
57      Furthermore, in the present case, the Board of Appeal found, in paragraph 57 of the contested decision, that the word element ‘triluxe’, which is almost identical to the earlier mark, was a ‘co-dominant’ element of the international registration at issue. Thus, contrary to what the applicant alleges, the situation is not similar to that which gave rise to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), nor, as EUIPO rightly maintains before the Court, to that which gave rise to the judgment of 15 September 2016, Arrom Conseil v EUIPO – Nina Ricci (Roméo has a Gun by Romano Ricci) (T‑359/15, not published, EU:T:2016:488), both of which concerned the assessment of elements with an independent distinctive role.
58      Contrary to what the applicant claims, the Board of Appeal carried out the comparison of the signs at issue as a whole, taking into account, inter alia, their distinctive elements, as is apparent from paragraphs 35 to 50 above. In particular, it must be pointed out that the Board of Appeal correctly took into consideration the fact that the earlier mark and one of the word elements of the international registration at issue are almost identical, in respect of which it had already found that it was no less visible or visually eye-catching because it was located in the middle of that mark, in the absence of a composite element in which the word at issue may somehow not be as immediately perceived (see paragraph 38 above).
59      In these circumstances, having regard to all the interrelated elements taken into consideration by the Board of Appeal (see paragraphs 22 and 51 above), and without it being necessary to assess the perception of the marks by the Spanish-speaking public, the Board of Appeal acted correctly in finding that, taking into account the overall impression produced by the signs, there was a likelihood of confusion in the minds of the relevant public, in particular the Italian-speaking public, such a conclusion being further reinforced by the fact that the relevant public may perceive the sign which is the subject of the international registration as an ‘umbrella’ mark. Contrary to the applicant’s claims, that conclusion remains valid for a professional public with a high level of attention and even for goods which, although not identical, are nevertheless similar.
60      In the light of all of the foregoing, the applicant’s single plea in law, put forward in support of its claim for amendment and annulment, must be rejected and the action must be dismissed in its entirety.
Costs
61      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.
62      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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Vita Zahnfabrik H. Rauter GmbH & Co. KG to pay the costs.
Marcoulli
Schwarcz
Norkus
Delivered in open court in Luxembourg on 2 February 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.