JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
5 March 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark ecovie – Earlier EU figurative and word marks ECOVER and earlier EU word mark ECOVER ESSENTIAL – International registration of an earlier figurative mark ecover – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑279/24,
People Against Dirty Holdings Ltd, established in Frimley (United Kingdom), represented by J. Quirin, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Ningbo Future Houseware Co. Ltd, established in Ningbo (China),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: V. Di Bucci,
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 its action under Article 263 TFEU, the applicant, People Against Dirty Holdings Ltd, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 March 2024 (Case R 1332/2023-2) (‘the contested decision’).
Background to the dispute
2        On 7 March 2022, the other party to the proceedings before EUIPO, Ningbo Future Houseware Co. Ltd, filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered goods in Classes 21, 22 and 24 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 21: ‘Dishcloths; feather-dusters; trays for domestic use; trays of paper, for household purposes; dinner services; cups; plates; carpet sweepers; carpet beaters (non-electric -); animal bristles [brushware]; combs for use on domestic animals; brooms for cleaning purposes; cosmetic, hygiene and beauty care utensils; toilet brushes; toilet and bathroom cleaning utensils; drinking bottles for sports; drinking vessels; drinking glasses; drinking straws; clothes-pins; reusable silicone food covers; eyelash brushes; toothbrushes; toothpicks; toothpick holders; dusting cloths’;
–        Class 22: ‘Jute; mesh bags for washing laundry; nets; sisal; bags [envelopes, pouches] of textile, for packaging; laundry bags’;
–        Class 24: ‘Textile napkins for removing makeup; textile hair drying towels; household textiles; jute fabrics; fabrics; face cloths of textile; towels [textile]; textile handkerchiefs; tablecloths of textiles; tablecloths, not of paper; table napkins of textile; table linen, not of paper; washing gloves’.
4        On 8 June 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        the EU word mark ECOVER filed on 1 April 1996 and registered on 29 October 2001 under No 144 352, covering goods in Classes 3, 5 and 16, corresponding, for each of those classes, to the following description:
–        Class 3: ‘Bleaches and other detergents, including fabric softeners; cleaning, polishing, scouring and abrasive preparations; soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cotton wool and cotton swabs for cosmetic use’,
–        Class 5: ‘Hygienic products for women; plasters, materials for dressings; disinfectants; vermicides; fungicides and herbicides, pesticides; air deodorizing preparations’,
–        Class 16: ‘Paper, paperboard and goods made from these materials in so far as not included in other classes; household paper, toilet paper, cleaning paper, printing materials; photographs [printed]; stationery; adhesives for stationery or household purposes; artists’ materials; brush pens; typewriters and office requisites [except furniture]; teaching materials [except apparatus]; playing cards; printing type; printing blocks; excluding bookbinding materials, case materials, materials for the packaging and cardboard industry’;
–        the EU figurative mark reproduced below, registered on 29 September 2020 under No 18 251 268, for goods in Classes 3 and 5:
–        the EU word mark ECOVER ESSENTIAL, registered on 22 June 2017 under No 16 453 367, designating goods in Class 3,
–        the international registration designating the European Union in respect of the figurative mark reproduced below, registered on 23 May 2014 under No 1 232 425, for goods in Classes 3, 5 and 16:
6        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).
7        On 13 June 2023, the Opposition Division rejected the opposition.
8        On 26 June 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that, taking into account the relevant factors and their mutual interdependence, there was no likelihood of confusion as to the origin of the goods covered by the marks at issue on the part of the relevant public.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        annul all the orders as to costs made by EUIPO against the applicant and order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
The applicant’s general reference to its written submissions before EUIPO
12      In paragraph 21 of the application, the applicant states that it ‘reiterates the whole submissions that have been filed before the EUIPO [Opposition Division] and the [Board of Appeal]’.
13      In that regard, it must be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and to Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain the pleas in law and arguments relied on and a summary of those pleas in law. According to settled case-law, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself. It is not for the General Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgments of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 18 and 19 and the case-law cited, and of 2 March 2022, Distintiva Solutions v EUIPO – Makeblock (Makeblock), T‑86/21, not published, EU:T:2022:107, paragraph 22 and the case-law cited).
14      Accordingly, and as EUIPO correctly submits, it is solely in the light of the arguments put forward in the application that that application will be examined.
The merits of the single plea in law
15      The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In support of that plea, it submits that the Board of Appeal erred in its assessment of, first, the relevant public and its level of attention, secondly, the visual and phonetic comparison of the signs, thirdly, the degree of distinctive character of the earlier marks and, fourthly, the finding that there was no likelihood of confusion.
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      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      It is in the light of those considerations that the sole plea in law relied on by the applicant must be examined.
21      For reasons of procedural economy, the Court considers it appropriate to assess the legality of the contested decision by first examining whether the Board of Appeal was fully entitled to conclude that there was no likelihood of confusion between the mark applied for and the earlier EU word mark ECOVER (‘the earlier mark’), without referring to the other earlier marks referred to in paragraph 5 above (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO – Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 26).
The relevant public
22      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).
23      In the present case, the Board of Appeal found that the relevant territory was that of the European Union as a whole, which is not disputed by the applicant. In addition, it stated that the applicant acknowledged that at least some of the goods at issue were aimed at professionals and found that those professionals had a higher level of attention than that of the average consumer. Furthermore, it found, in essence, that the relevant public consisted of the general public and professionals and that its level of attention varied from average to high.
24      Accordingly, for the purposes of assessing whether there was a likelihood of confusion, the Board of Appeal took into account the fact that the level of attention of the relevant public varied between average and high (see paragraph 64 of the contested decision) while taking care to state that, even with an average level of attention, the outcome would remain unchanged (see paragraph 20 of that decision), in particular concerning the perception of the prefix ‘eco’ in the signs at issue (see paragraph 72 of that decision).
25      The applicant denies having claimed that the relevant public consisted of the general public and professionals. It adds that, even if professionals were involved in the purchasing process in respect of the goods at issue, that would not increase the level of attention of the relevant public. According to the applicant, they are self-service goods which can be purchased in general stores without any need for outside guidance or in-depth research, according to settled case-law (judgments of 25 November 2015, Sephora v OHIM – Mayfield Trading (Representation of two undulating vertical lines), T‑320/14, not published, EU:T:2015:882, and of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167). Furthermore, it submits that the Board of Appeal should have taken into account the perception of the part of the relevant public with the lowest level of attention, namely the general public with an average level of attention.
26      EUIPO disputes the applicant’s arguments. It argues that the goods at issue comprise a broader spectrum of goods than those contested in the case-law relied on by the applicant. It adds that, as found in the contested decision, even if the whole of the relevant public displayed an average level of attention, that level of attention would not affect the operative part of that decision.
27      In that regard, it should be noted that, as the applicant submits, with regard to the assessment of the likelihood of confusion, the public with the lowest level of attention must be taken into consideration (see, to that effect, judgments of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 32 and the case-law cited, and of 10 October 2019, Kalypso Media Group v EUIPO – Wizards of the Coast (DUNGEONS), T‑700/18, not published, EU:T:2019:739, paragraph 34 and the case-law cited).
28      Furthermore, it is common ground between the parties that the goods at issue are aimed, at the very least, at the general public with an average level of attention.
29      It is therefore necessary, in the present case, to assess the likelihood of confusion by taking into account the part of the relevant public which displays the lowest level of attention, namely the general public, whose level of attention is average.
The comparison of the goods
30      The Opposition Division, for reasons of procedural economy, did not carry out a full and specific comparison of the goods at issue and decided to proceed on the assumption that those goods were identical, the most favourable assumption for the applicant.
31      The Board of Appeal followed the same approach, one which is not disputed by the applicant.
The comparison of the signs
32      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs, 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).
33      In the present case, the mark applied for is a figurative mark containing the word element ‘ecovie’.
34      The earlier mark consists of the element ‘ecover’, written as a single unit.
35      Before addressing the question of the visual, phonetic and conceptual similarity of the signs at issue, it is necessary to examine the Board of Appeal’s assessment of their distinctive and dominant elements.
–       The distinctive and dominant elements of the signs at issue
36      In the first place, the Board of Appeal found, in paragraphs 30 to 33 of the contested decision, like the Opposition Division, that consumers would identify the prefix ‘eco’ in the signs at issue and would associate it with the terms ‘ecological’ or ‘ecology’. Therefore, that common prefix is devoid of distinctive character. That assessment by the Board of Appeal is not disputed by the applicant.
37      In the second place, the Board of Appeal confirmed, in paragraphs 34 and 35 of the contested decision, the Opposition Division’s assessment that the endings ‘vie’ and ‘ver’, present at the end of the mark applied for and the earlier mark respectively, had no meaning, at least for part of the relevant public, and therefore had distinctive character. The applicant does not dispute that assessment either.
38      The applicant merely calls into question the conclusions that the Board of Appeal drew from those assessments when examining the similarity of the signs at issue.
39      In that regard, it is sufficient to recall that the earlier mark consists only of one word element (see paragraph 34 above). Furthermore, if the mark applied for consists of a word element and several figurative elements, its word element must be considered to be dominant. Where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name of the trade mark than by describing its figurative element (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited). Moreover, as the Board of Appeal pointed out in paragraph 54 of the contested decision, the figurative elements of the mark applied for are not negligible and must therefore be regarded as ancillary.
40      Furthermore, it is apparent from the case-law that, despite its weak distinctive character, an element of a mark which is descriptive is likely to attract the attention of the relevant public because of its length and position at the beginning of that mark (see, to that effect, judgment of 6 June 2013, McNeil v OHIM – Alkalon (NICORONO), T‑580/11, not published, EU:T:2013:301, paragraph 63).
41      In the present case, account must be taken of the fact that the prefix ‘eco’ appears in the first part of the signs at issue. Furthermore, the length of that prefix is identical to that of the endings ‘vie’ of the mark applied for and ‘ver’ of the earlier mark. In view of those circumstances, that prefix cannot be regarded as negligible in the overall impression conveyed by the signs at issue.
42      Consequently, it must be held that, despite the fact that the prefix ‘eco’ of the signs at issue is descriptive, it must nevertheless be taken into account in assessing the visual, phonetic and conceptual similarity of those signs.
–       Visual comparison
43      The Board of Appeal found, in paragraph 55 of the contested decision, that the signs at issue had a low degree of visual similarity. In particular, it considered that, according to the case-law, descriptive elements were not generally considered to be dominant in the overall impression produced by a trade mark and that the relevant public would attach more importance to the final part of that mark. As regards the final part of those signs, it concluded that there were significant differences between the endings ‘vie’ and ‘ver’.
44      The applicant complains that the Board of Appeal did not compare the signs at issue as a whole. It states, in essence, that the potential weak distinctive character of the prefix ‘eco’ in those signs does not prevent it from being taken into account, especially since the endings ‘ver’ and ‘vie’ have no specific meaning enabling the relevant public to detect two word elements which have a specific meaning within those signs. In addition, it submits that that prefix determines the overall impression of the signs at issue, given its position at the beginning of those signs and the fact that it represents half of their letters. According to the applicant, five of the six letters of the signs concerned are identical and four of those are placed in the same order; the fact that one letter differs cannot overcome those similarities.
45      EUIPO disputes the applicant’s arguments and submits that the Board of Appeal assessed the signs at issue as a whole. It submits, in essence, that, according to settled case-law, the presence of a common element with a weak distinctive character, in the present case the prefix ‘eco’ of those signs, reduces the similarity between those signs. According to the applicant, that element has a reduced capacity to affect the perception of the relevant public. It adds that there are significant differences between the endings of those signs which will be clearly noticed by that public.
46      As a preliminary point, it must be borne in mind, as is apparent from paragraphs 2 and 5 above, that the earlier mark is a word mark, whereas the mark applied for is a figurative mark composed, inter alia, of a word element.
47      Furthermore, it should be noted that, according to the case-law, where a figurative sign containing one or more word elements is compared visually to a word sign, those signs are held to be visually similar if they have a significant number of letters in the same position in common and if that word element or those word elements are not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
48      In the present case, as has been pointed out in paragraphs 40 to 42 above, all the elements of the signs at issue must be taken into account in the comparison of those signs.
49      In the first place, it must be held, as the Board of Appeal did, that visual similarity between the signs at issue results from the fact that the word element of the mark applied for and the earlier mark coincide in their first three letters, namely the prefix ‘eco’.
50      In the second place, it should be noted that the word element of the mark applied for and the earlier mark also share their fourth letter ‘v’ and the letter ‘e’, which appears as the sixth letter in that word element and as a fifth letter in the earlier mark.
51      While it is true that the word element of the mark applied for and the earlier mark differ in the presence of the letters ‘i’ and ‘r’, respectively in that word element and in the earlier mark, and in the position of the letter ‘e’, those differences do not counteract the important similarity arising from the fact that their first four letters are identical, since that word element and that earlier mark have an identical length (see, to that effect, judgment of 10 December 2014, Novartis v OHIM – Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 39 and the case-law cited).
52      In the third place, as regards the figurative elements of the mark applied for, as has been pointed out in paragraph 39 above, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter.
53      In the fourth place, as regards the judgments relied on by the Board of Appeal and referred to by EUIPO in its response, in particular those of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE) (T‑602/19, not published, EU:T:2020:463), and of 12 October 2022, Shopify v EUIPO – Rossi and Others (Shoppi) (T‑222/21, under appeal, EU:T:2022:633), it is true that they held that an element common to both signs which is devoid of any distinctive character in relation to the goods at issue considerably reduced the similarity between those signs. Nevertheless, those judgments concerned comparisons between signs (Shoppi and SHOPIFY, on the one hand, and NATURANOVE and NATURALIUM, on the other) which included, in addition to a common element (‘shop’ and ‘natura’ respectively), elements which were not similar (‘pi’ and ‘ify’, on the one hand, and ‘nove’ and ‘lium’, on the other). That is not the case here, since the endings ‘vie’ and ‘ver’ of the signs at issue are similar because they begin with the letter ‘v’ and have two of their three letters in common. It follows that those judgments are neither relevant nor transposable to the present case.
54      Accordingly, having regard to the foregoing, the Board of Appeal’s finding that the signs at issue have a low visual similarity must be reversed and it must be held that, on the contrary, those signs are visually similar to an average degree.
–       Phonetic comparison
55      The Board of Appeal found that the phonetic similarity of the signs at issue was low, since there were significant differences in the pronunciation of the endings ‘vie’ of the word element of the mark applied for and ‘ver’ of the earlier mark.
56      The applicant reiterates that account must be taken of the prefix ‘eco’ of the signs at issue when assessing their similarity. It submits that that prefix is likely to catch the attention of the relevant public because of its position at the beginning of those signs. In addition, those signs consist of three syllables and only the last of those syllables is not pronounced in the same way. For those reasons, the applicant concludes that the signs in question are phonetically similar to an average degree.
57      EUIPO disputes the applicant’s arguments and submits that the Board of Appeal assessed the signs at issue as a whole.
58      In the first place, for the same reasons as those set out in paragraphs 40 to 42 above, the prefix ‘eco’ must also be taken into account in assessing the phonetic similarity of the signs at issue.
59      In the second place, it should be noted that the consonant ‘v’, with which the syllable following the prefix ‘eco’ begins in each of the signs at issue, will be pronounced in the same way by part of the general public. Furthermore, the length of the word element of the mark applied for is identical to that of the earlier mark.
60      However, the general public will not pronounce the endings ‘vie’ and ‘ver’ of the signs at issue in the same way, with the exception of the consonant ‘v’ with which those endings begin.
61      Therefore, from a phonetic point of view, the signs at issue have an average degree of similarity. The Board of Appeal’s factual assessment that those signs are phonetically similar to a low degree is therefore incorrect.
–       Conceptual comparison
62      The Board of Appeal found that the signs at issue coincided in terms of the prefix ‘eco’ which, however, because it was not distinctive, had a limited impact on the similarity of the signs taken as a whole. It concluded that the conceptual similarity between those signs was low.
63      The applicant does not dispute the Board of Appeal’s findings concerning the conceptual comparison of the signs at issue.
The distinctive character of the earlier mark
64      It is apparent from recital 11 of Regulation 2017/1001 that the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
65      Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 61).
66      The Board of Appeal held in paragraph 62 of the contested decision that the inherent distinctive character of the earlier mark was less than average.
67      The applicant complains that the Board of Appeal did not follow the Opposition Division’s finding that the earlier mark enjoyed a normal degree of distinctive character, even though that was not disputed before the Board of Appeal. It states that, since the ending ‘ver’ was considered to be distinctive, the distinctive character of that mark should be considered to be average.
68      EUIPO disputes the applicant’s arguments. It submits that the presence of the prefix ‘eco’ in the earlier mark, which is entirely devoid of distinctive character, which is not disputed by the applicant, necessarily has a negative impact on the inherent distinctive character of that mark.
69      In the first place, it has been held that, under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, so that the Board of Appeal may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties. The fact remains that the Board of Appeal is required to decide on all issues which, in the light of the facts, evidence and arguments provided by the parties and the relief sought, are necessary to ensure a correct application of that regulation and in respect of which it has all the information required in order to be able to take a decision, even if no element of law related to those issues has been relied on by the parties before it (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41; see also judgment of 14 July 2021, JT v EUIPO – Carrasco Pirard (QUILAPAYÚN), T‑197/20, not published, EU:T:2021:429, paragraph 56 and the case-law cited).
70      The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, and the distinctive character of the earlier mark is one of those relevant factors (see, to that effect and by analogy, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 51 and the case-law cited), as is apparent, moreover, from the wording of Article 8(1)(b) of Regulation 2017/1001.
71      Accordingly, in the context of opposition proceedings based on Article 8(1)(b) of Regulation 2017/1001, the assessment of the inherent distinctive character of the earlier mark constitutes an issue of law which is necessary to ensure the correct application of that regulation, so that the instances of EUIPO are required to examine that issue, if necessary of their own motion. As that assessment does not presuppose any matter of fact which is for the parties to establish and does not require the parties to provide facts, arguments or evidence tending to establish that character, EUIPO alone is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 43).
72      Consequently, the Board of Appeal was correct to examine the Opposition Division’s findings relating to the distinctive character of the earlier mark which were not disputed by the applicant.
73      In the second place, it should be borne in mind that, in any event, an earlier trade mark has a minimal intrinsic distinctive character merely because it has been registered (see, to that effect, judgment of 29 April 2015, Hotel Tourist World v OHIM – WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraphs 35 and 37 and the case-law cited).
74      In the present case, first, as has been stated in paragraph 36 above, the prefix ‘eco’ in the earlier mark will be perceived by the general public as being descriptive as regards the ecological character of the goods at issue, with the result that that prefix is devoid of distinctive character.
75      Secondly, the ending ‘ver’ of the earlier mark has distinctive character, as has been stated in paragraph 37 above.
76      In that regard, it must be pointed out that the prefix ‘eco’ and the ending ‘ver’ of the earlier mark account for half of the length of that mark. Having regard to the identical length and characteristics of that prefix and of that ending, it must be held that that ending enhances the inherent distinctive character of that mark beyond the minimum which it necessarily enjoys by virtue of its registration.
77      Consequently, taken as a whole, the inherent distinctive character of the earlier mark must be considered to be average. The Board of Appeal’s factual assessment that that inherent distinctive character was below average is therefore incorrect.
Global assessment of the likelihood of confusion
78      According to settled case-law, 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 17 April 2008, Ferrero Deutschland v OHIM, C‑108/07 P, not published, EU:C:2008:234, paragraph 45).
79      The Board of Appeal set out, in paragraphs 64 to 74 of the contested decision, the factors which, in its view, supported the conclusion that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
80      First, the Board of Appeal stated that the goods at issue were assumed to be identical and were aimed at the general public and the professional public. Secondly, it found that the level of attention varied between average and above average. Thirdly, it noted that the signs at issue were visually, phonetically and conceptually similar to a low degree. Fourthly, it found that the distinctive character of the earlier mark was below average. Lastly, it found that, in view of the non-distinctive character of the prefix ‘eco’ and the fact that the relevant public would notice the differences between the endings ‘vie’ and ‘ver’, there was no likelihood of confusion between the marks at issue.
81      The applicant submits, in essence, that there is a likelihood of confusion, given the identity of the goods at issue, the average inherent distinctive character of the earlier mark and the fact that the signs at issue are visually and phonetically similar. It claims that such a conclusion would not grant it a monopoly over the prefix ‘eco’, since it would not be that descriptive prefix as such that would be registered but its combination with the ending ‘ver’.
82      EUIPO disputes the applicant’s arguments. It submits, in particular, that the applicant’s arguments concerning the prefix ‘eco’ are spurious and that the Board of Appeal’s conclusion was consistent with the most recent judgments delivered by the General Court concerning trade marks which are similar only in terms of their weak distinctive elements.
83      In the present case, as has been pointed out in paragraphs 30 and 31 above, the Board of Appeal relied on the assumption that the goods at issue were identical. It follows that, in order to rule out the likelihood of confusion between the marks at issue in that situation, that identical nature should be offset by a high degree of difference between the signs at issue.
84      Furthermore, it follows from paragraphs 22 to 29 above that, for the purposes of assessing the likelihood of confusion, it is necessary to take into account the average level of attention of the general public.
85      In addition, it is apparent from paragraphs 54 and 61 above that the signs at issue, taken as a whole, have an average degree of visual and phonetic similarity, the Board of Appeal having erred in considering that that similarity was only of a low degree. It has also been found that the inherent distinctive character of the earlier mark had to be regarded as average and not as weak.
86      Since the factors referred to in paragraph 85 above have an impact on the overall analysis of the likelihood of confusion (see paragraphs 18 and 78 above), it must be held that those errors necessarily vitiated the Board of Appeal’s reasoning relating to the assessment of the likelihood of confusion, since it relied inter alia on the low degree of visual, phonetic and conceptual similarity and on the weak distinctive character of the earlier mark in order to find that any likelihood of confusion was ruled out.
87      Consequently, the Board of Appeal erred in finding that there was no likelihood of confusion between the signs at issue, assuming, as it did, that the goods at issue were identical.
88      In the light of all of the foregoing, the action must be upheld and the contested decision annulled.
Costs
89      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.
90      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the forms of order sought by the applicant.
91      Furthermore, the applicant also claimed, in essence, that EUIPO should be ordered to pay the costs incurred in the proceedings before EUIPO.
92      In that regard, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, the applicant’s claim in respect of the costs relating to the proceedings before the Opposition Division, which are not recoverable costs, is inadmissible (see, to that effect and by analogy, judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraphs 77 and 78). By contrast, as regards the costs relating to the proceedings before the Board of Appeal, EUIPO must also be ordered to pay the costs incurred by the applicant for the purposes of those proceedings.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 March 2024 (Case R 1332/2023-2);
2.      Orders EUIPO to pay the costs, including those incurred for the purposes of the proceedings before the Board of Appeal.
Kowalik-Bańczyk
Hesse
Dimitrakopoulos
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.