JUDGMENT OF THE GENERAL COURT (Third Chamber)
15 September 2021 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark ALBÉA – Earlier international registration designating the European Union – Word mark Balea – Relative ground for refusal – Likelihood of confusion – Distinctiveness of the earlier international registration designating the European Union – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑852/19,
Albéa Services, established in Gennevilliers (France), represented by J.‑H. de Mitry, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
dm-drogerie markt GmbH & Co. KG, established in Karlsruhe (Germany), represented by O. Bludovsky, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 23 September 2019 (Case R 1480/2019-2), relating to opposition proceedings between dm-drogerie markt and Albéa Services,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz (Rapporteur) and G. De Baere, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 16 December 2019,
having regard to the response of EUIPO lodged at the Court Registry on 3 April 2020,
having regard to the response of the intervener lodged at the Court Registry on 6 April 2020,
having regard to the measure of organisation of procedure of 3 March 2021 and the reply of the applicant lodged at the Court Registry on 25 March 2021,
further to the hearing on 29 April 2021,
gives the following
Judgment
Background to the dispute
1        On 14 November 2013, the applicant, Albéa Services, designated the European Union for international registration No 1210553 in respect of the following figurative sign:
2        The goods and services in respect of which protection of the international registration at issue was sought are in Classes 3, 5, 6, 8, 16, 17, 20, 21, 40 and 42 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, for Classes 3, 8, 16, 20 and 21, to the following description:
–        Class 3: ‘Soaps; perfumery; essential oils; cosmetics; beauty products; mascaras; make-up products; lipsticks; hair lotions; dentifrices; lipstick cases of metal’;
–        Class 8: ‘Eyelash curlers’;
–        Class 16: ‘Brushes [paintbrushes]; paintbrushes; cardboard tubes; tubes of paper; cardboard boxes, boxes of paper; pots made of cardboard; pot holders of paper; plastic materials for packaging, namely, bags, sachets, films and sheets; cardboard packaging; paper packaging; parts and component parts for all the aforesaid goods;
–        Class 20: ‘Packaging containers of plastic; boxes of plastic; packaging containers and packaging, of plastic; cylinders, boxes, containers of plastic; packaging containers, not of metal, for industrial and commercial purposes; plastic packaging containers, for cosmetics, beauty, perfumery, and hygiene; closures not of metal for containers; plastic closures for containers; closures for sealing containers made of plastic; caps, caps and sealing devices, of plastic for containers, and packaging; plastic stoppers for dispensers; sealing and secondary sealing caps not of metal; cosmetics (not of metal); applicators of plastic and not of metal for attachment to containers for dispensing the content of said containers; covers and closures, not of metal, for containers, jars and bottles; boxes of plastic; parts and component parts for all the aforesaid goods;
–        Class 21: ‘Cosmetic applicators; boxes of glass; combs and sponges; flasks; vaporizers for perfumes and cosmetic, beauty and hygiene products; sprayers for perfumes and cosmetic, beauty and hygiene products; powder compacts; soap boxes, soap dispensers; toilet cases; brushes (except paintbrushes); brush-making materials; brushes (except paint brushes), brushes and brush instruments for mascara and cosmetic products; brushes and paintbrushes for mascara; brushes for eyelashes; brushes for beauty care; cosmetic brushes and paintbrushes; cosmetic utensils, namely sponges, powder puffs, eyebrow brushes and paintbrushes; stoppers of glass, porcelain and earthenware; all these products not of precious metal, or coated therewith; utensils and containers for applying hair dye (included in this class); products for body care and beauty care; tubes, vials, bottles, squeeze tubes not of metal; tubes or vials of lip salve (cosmetics); tubes and lipstick cases, powder compacts, containers for eye-liner, containers for cosmetic lip gloss (cosmetics), mascara containers; bottles and flasks of cosmetics and care of plastic; dispensers of plastic materials for cosmetic, beauty, perfumery and hygiene products; pump dispensers for dentifrices, for cosmetics, beauty, perfumery and hygiene products; plastic pumps not of metal to be fixed on aerosols and other containers; pumps for perfumes and cosmetic products (not of metal); metal pumps for perfumes and cosmetics; pumps of metal for attaching to aerosols and other containers; pumps for pump dispensers for cosmetic products, beauty, perfumery, hygiene, metal pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, plastic pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, metal or plastic devices to be fixed to containers for dispensing the content of said containers; paintbrushes and mascara brushes for cosmetics; applicators for mascara and cosmetics (paintbrushes); parts and component parts for all the aforesaid goods’.
3        The designation of the Union through the international registration at issue was published by the European Union Intellectual Property Office (EUIPO) in Community Trade Marks Bulletin
No 154/2014 of 20 August 2014.
4        On 15 May 2015, the intervener, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition pursuant to Articles 156 and 41 of 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)) (now Articles 196 and 46 of Regulation 2017/1001), to the international registration at issue, inter alia in respect of the goods referred to in paragraph 2 above.
5        The opposition was based on earlier international registration designating the Union No 1112011 of the mark Balea, covering goods in Classes 3, 5, 8, 18, 21, 24, 25, 26 and 32 corresponding, for the goods in Classes 3, 8 and 21, to the following description:
–        Class 3: ‘Washing and bleaching preparations; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumeries, essential oils, preparations for body and beauty care; hair lotions; tooth care preparations; tissues impregnated with essential oils for cosmetic use; tissues impregnated with lotions for cosmetic use; oils and lotions, creams, powders, bath salts, not for medical purposes; washing and shower gels, face, skin and body creams; hair care preparations, after shaves, Colognes, preparations, including creams, gels and mousses, for use before, during and after shaving, shaving foams, shaving gels, shaving creams, shaving sticks; make-up removing preparations; mouth care preparations, not for medical purposes; peelings; depilatory preparations; cosmetic kits (filled); mineral waters for cosmetic purposes; alum stone (antiseptic); antiperspirants (antiperspirant toiletries); aromatic essential oils, natural (essential oils); breath refreshing sprays; ethereal essences; eyebrow cosmetics; eyebrow pencils; bath salts, not for medical use; bath salts, cosmetic; beard dying preparations; moustache wax; pumice stone; bleaching cream for the skin; bleaching preparations for cosmetic purposes; deodorants for personal use (perfumeries); disinfectant soaps; deodorizing soaps; perfumed wood; perfume substances for laundry use; eau de toilette; hair bleach, laundry bleach; depilatory wax; dying substances for toiletry use; dyes for cosmetic use; hair dying substances; hair spray; hair washing preparations; skin creams (cosmetic); skin care preparations (cosmetic); jasmine oil; adhesives for wigs; adhesives for cosmetic purposes; adhesives for artificial eyelashes; perfumes and colognes; eau de Colognes; cosmetics; cosmetic crayons; artificial nails; artificial eyelashes; lavender oil; lavender water; lipsticks; lotions for cosmetic purposes; face paint; almond milk for cosmetic purposes; almond oil; almond soap; medical soaps; cleaning cloths impregnated with a cleaning preparation; musk (perfumeries); nail varnish; nail care preparations; neutralizing preparations for permanent waves; oils for body and beauty care; oils for cosmetic purposes; oils for cleaning purposes; crimping preparations for hair; perfumery oils; perfumes; pastes for razor leather strops; peppermint for perfumeries; peppermint essence; natural aromatic substances for drinks (essential oils); polishing preparations for dental prostheses; pomades for cosmetic purposes; potpourris (perfumed substances); preparations for dry cleaning; shaving preparations; shaving soaps; shaving stones (antiseptic); after shave lotion; fumigating preparations (perfumed substances); joss sticks; cleansing milk for body and beauty care; cleaning preparations; cleaning preparations for dental prostheses; slimming preparations, cosmetic; make-up; make-up preparations; make-up powder; beauty masks; shoe polish; antiperspirant soaps; soaps against foot odour; shampoos; sun protection preparations (cosmetic preparations for sun tanning); talcum powder for toiletry use; animal cosmetics; animal shampoos; toiletries (body care); toilet soaps; toilet water; cloths, impregnated with cosmetic lotions; vaseline (petroleum jelly) for cosmetic purposes; washing powder (laundry); hydrogen peroxide for cosmetic purposes; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes; fabric softener for laundry; eyelash cosmetics; mascara; tooth bleaching gel; decorative transfers for cosmetic purposes; essential oils of lemon; moist wash cloths impregnated with preparations for body and beauty care’;
–        Class 8: ‘Hand-operated tools; …’;
–        Class 21: ‘Household and kitchen utensils and containers; combs and sponges; brushes (except those used for painting); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware, not included in other classes; plates, warming plates (as insulating containers for food), spout cups; baby bathtubs (portable); baby bottle warmers (non-electric); bottle and teat brushes; tooth brushes; hair brushes; bottle holders; lunch boxes; refrigerator boxes; warming containers (insulating containers); powder brushes; waste bins; make-up removing apparatus, non-electric; aerosol vaporizers, not for medical purposes; ash strainers (household articles); eyebrow brushes; goblets; ironing boards; brushes for body and beauty care; brush wares; brushes of porcelain, ceramic or glass; disposable plates; ice buckets; electric brushes, except machine parts; electric combs; flagons; containers for household or kitchen; towel holders; towel bars and towel rings; household implements; household gloves; skin peeling sponges; insect traps; insulating containers; insulating bottles; caulking brushes; combs (coarse); comb cases; ceramic products for household use; baskets for household use; cosmetic utensils; cooling bags; cooling bags, boxes, portable, non-electric; water apparatus for cleaning teeth and gums; nail brushes; paper or plastic cups; perfume vaporizers; polishing apparatus and machines, non-electric, for household purposes; powder compacts; powder puffs; shaving brushes; shaving brush holders; fumigating/smoking containers; cleaning equipment, hand-operated; cleaning cloths; dishes; shoe horns; shoe brushes; shoe cleaning apparatus, non-electric; shoe trees (lasts); sponges for household use; sponge holders; soap boxes; soap holders, dishes; soap dispensers; toiletry apparatus (body care); toilet paper holders; toilet paper dispensers; toilet sponges; drink containers; drinking glasses; washboards; wash tubs; tooth brushes, electric; dental floss; toothpicks; toothpick containers’.
6        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7        On 13 September 2016, the Opposition Division rejected the opposition, in so far as it concluded, inter alia, that there was no likelihood of confusion on the part of the relevant public.
8        On 12 October 2016, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
9        By decision of 25 May 2017 in Case R 1870/2016‑1 (‘the first decision of the Board of Appeal’), the First Board of Appeal of EUIPO dismissed the appeal.
10      By application lodged at the Court Registry on 17 August 2017, the intervener sought, inter alia, annulment of the first decision of the Board of Appeal. In support of its action, the intervener put forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
11      By judgment of 28 March 2019, dm-drogerie markt v EUIPO – Albea Services (ALBÉA) (T‑562/17, not published, EU:T:2019:204), the General Court annulled the first decision of the Board of Appeal.
12      By decision of 23 September 2019 in Case R 1480/2019‑2 (‘the contested decision’), the Second Board of Appeal of EUIPO partially annulled the decision of the Opposition Division to the extent that the latter had rejected the opposition to the applicant’s trade mark application.
That annulment concerned all of the goods covered by that application in Classes 3, 8 and 21 and the majority of the goods covered in Classes 16 and 20. It allowed ‘[the international registration at issue to] proceed for the remaining goods and services’, namely all of the goods in Classes 5, 6, 17, 40 and 42 and part of the goods in Classes 16 and 20, namely ‘brushes [paintbrushes]; paintbrushes; parts and component parts for all the aforesaid goods; cardboard tubes; tubes of paper’ in Class 16 and ‘packaging containers, not of metal, for industrial and commercial purposes’ in Class 20.
13      In support of those conclusions, the Board of Appeal took the view, first, that the goods at issue in Class 3 were addressed to average consumers displaying an average level of attention (paragraph 21 of the contested decision), whereas the goods at issue in Classes 8, 16, 20 and 21 were intended both for the general public and for professionals. Since those two groups have different levels of attention, the lowest level of attention must be taken into account, namely an average level of attention (paragraphs 24, 25, 27 and 28 of the contested decision).
14      Secondly, the Board of Appeal considered itself bound by paragraph 26 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), from which it followed that the goods at issue in Class 3 were identical (paragraph 32 of the contested decision). Furthermore, it took the view that, in relation to the goods covered by the mark that was the subject of the earlier international registration, the goods covered by the international registration at issue in Class 8 were identical (paragraph 39 of the contested decision), that the goods in Class 16 were in part dissimilar (paragraphs 40 and 44 of the contested decision), in part similar to an average degree (paragraphs 42 and 43 of the contested decision) and in part identical (paragraph 41 of the contested decision), that the goods in Class 20 were in part similar to an average degree (paragraphs 46 and 47 of the contested decision) and in part dissimilar (paragraph 48 of the contested decision) and that the goods in Class 21 were in part identical (paragraphs 50, 52, 53, 54, 57 and 58 of the contested decision), in part highly similar (paragraphs 49, 51, 56, 59 and 60 of the contested decision) and in part similar to an average degree (paragraph 55 of the contested decision).
15      Thirdly, the Board of Appeal considered itself bound by the assessment contained in the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), according to which the signs at issue were visually and phonetically similar to a low degree and were not conceptually similar (paragraph 62 of the contested decision).
16      Fourthly, the Board of Appeal took the view that the intervener had proved that the earlier international registration enjoyed an enhanced reputation in Germany as regards cosmetics (paragraph 73 of the contested decision).
17      Fifthly, the Board of Appeal found that, in view of the enhanced distinctiveness of the mark that was the subject of the earlier international registration and despite the low degree of similarity between the signs, there was a likelihood of confusion on the part of the relevant public for the goods at issue in Classes 3, 8, 16, 20 and 21, which it had considered to be identical, highly similar or similar to an average degree (paragraph 74 of the contested decision). By contrast, it took the view that there was no such likelihood of confusion for the other goods at issue (paragraphs 75 to 79 of the contested decision).
Forms of order sought
18      The applicant claims, in essence, that the Court should:
–        annul the contested decision to the extent that it annulled the decision of the Opposition Division;
–        order EUIPO to pay the costs.
19      EUIPO contends that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs incurred by the applicant.
20      The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to pay the costs incurred by the intervener.
21      At the hearing, EUIPO restricted its first head of claim to an application for annulment of the contested decision in so far as it annulled the decision of the Opposition Division, formal note of which was taken in the minutes of the hearing.
Law
22      In support of its action, the applicant puts forward, in essence, a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009 arising from errors made by the Board of Appeal in finding that there was a likelihood of confusion to the extent that it annulled the decision of the Opposition Division.
23      Whereas EUIPO takes the view that the Board of Appeal did in fact make certain errors in the contested decision and is of the opinion that, following the annulment of that decision by the Court, it will be for the Board of Appeal to carry out a new global assessment of the likelihood of confusion, the intervener disputes the applicant’s arguments and contends that the Board of Appeal did not err in finding that there was a likelihood of confusion to the extent that it did.
24      In accordance with Articles 156 and 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the protection of an international registration designating the European Union is to be refused if, because of its identity with, or similarity to, an 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. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009 (now Article 8(2)(a)(iv) of Regulation 2017/1001), ‘earlier trade marks’ means, inter alia, trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for protection of an international registration designating the European Union.
25      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
26      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).
Relevant public
27      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).
Goods at issue in Class 3
28      As regards the goods in Class 3 covered by the international registrations at issue, the Board of Appeal took the view, in paragraph 21 of the contested decision, that they were aimed at average consumers displaying an average level of attention.
29      In paragraph 21 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), the Court took the view that ‘essential oils’ and ‘cosmetics’ in Class 3 were goods primarily intended for the general public, who have an average level of attention, even if they could also be purchased by professionals or specialists, so that the level of attention should be average in respect of those goods. As that judgment had become final, the Board of Appeal was bound by those considerations.
30      In so far as the applicant, supported in that regard by EUIPO, submits that the Board of Appeal asserted that, in the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), the Court had taken the view that all of the goods at issue in Class 3 were intended both for the general public and for professional consumers, it must be stated that it misreads the contested decision. Indeed,
in paragraph 21 thereof, the Board of Appeal refers not to the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), but to another judgment, namely that of 16 December 2015, CareAbout v OHIM – Florido Rodríguez (Kerashot) (T‑356/14, not published, EU:T:2015:978), as EUIPO correctly noted. The Board of Appeal took the view that it followed from paragraphs 20 to 25 of the latter judgment that the goods in Class 3 covered by the international registration at issue were addressed to average consumers displaying an average level of attention.
31      To that extent, the Board of Appeal departed slightly from paragraph 21 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), as regards ‘essential oils’ and ‘cosmetics’ – the only goods to which that paragraph refers – in that it omitted to mention that those goods could also be purchased by professionals or specialists. However, the Court found that those goods were primarily intended for the general public, who have an average level of attention, so that, even if they could also be purchased by professionals or specialists, the level of attention should be held to be average. Thus, even though the Board of Appeal omitted to mention part of the relevant public as regards ‘essential oils’ and ‘cosmetics’, that error has no bearing on the level of attention that it found the relevant public to have in respect of all the goods at issue in Class 3, including ‘essential oils’ and ‘cosmetics’.
32      As regards the goods at issue in Class 3, apart from ‘essential oils’ and ‘cosmetics’, EUIPO is indeed correct in noting that it follows from paragraphs 20 and 24 of the judgment of 16 December 2015, Kerashot (T‑356/14, not published, EU:T:2015:978), which the Board of Appeal cited in the contested decision, that they are also addressed to professionals in the sector whose level of attention will, as a rule, be higher than average. However, in accordance with the case-law, the Board of Appeal was justified in taking into consideration the part of the relevant public with the lowest level of attention unless that part of the public was to be regarded as insignificant (see, to that effect, judgment of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, not published, EU:T:2011:37, paragraph 25), which is not the case here.
33      In short, the applicant disputes the Board of Appeal’s findings only as regards ‘lipstick cases of metal’ and submits that those goods are luxury items which are not aimed at the general public. However, first, EUIPO correctly submits that those goods, in that they are included in Class 3, already contain lipstick, unlike the ‘tubes and lipstick cases’ in Class 21 that are also covered by the international registration at issue, which are empty containers. Class 3 is entitled ‘non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’ and cannot therefore cover empty containers for such goods, whereas Class 21 covers ‘household and kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware’, and therefore, inter alia, containers.
34      Secondly, EUIPO observes, again correctly, that nothing in the designation ‘lipstick cases of metal’ suggests that those goods are necessarily luxury goods and it is apparent from the documents submitted by the intervener that empty ‘lipstick cases of metal’ are not necessarily sold at a high price.
35      Consequently, the Board of Appeal cannot reasonably be criticised for finding that, as regards the goods in Class 3, the level of attention of the relevant public was average.
Goods at issue in Classes 8, 16, 20 and 21
36      As regards the goods in Classes 8, 16, 20 and 21 covered by the international registration at issue, the Board of Appeal took the view, in paragraphs 24, 25, 27 and 28 of the contested decision, that they were intended both for the general public and for a professional public. Since those two groups have different levels of attention, the lowest level of attention must be taken into consideration, namely an average level of attention, given that those goods are goods purchased on a regular basis and at low prices.
37      Since it is apparent from the documents submitted by the intervener that containers for lipstick and cosmetic lip gloss, eye-liner and mascara are in fact freely available to end consumers for purchase over the internet at low prices (see also paragraph 34 above), the applicant’s claim that ‘containers for eye-liner, containers for cosmetic lip gloss (cosmetics), mascara containers’ in Class 21 are typically sold to professionals with a high level of attention must be rejected.
38      As regards the other goods covered by the international registration at issue in Class 21, which the applicant submits are typically sold by professionals specialising in the sale of containers for cosmetics to professionals displaying a high level of attention, namely ‘parts and component parts for paintbrushes and mascara brushes for cosmetics; applicators for mascara and cosmetics (paintbrushes)’ and ‘parts and component parts for dispensers of plastic materials for cosmetic, beauty, perfumery and hygiene products; plastic pumps not of metal to be fixed on aerosols and other containers; pumps for perfumes and cosmetic products (not of metal); metal pumps for perfumes and cosmetics; pumps of metal for attaching to aerosols and other containers; pumps for pump dispensers for cosmetic products, beauty, perfumery, hygiene, metal pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, plastic pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, metal or plastic devices to be fixed to containers for dispensing the content of said containers’, the intervener does not substantiate its claim that those goods are also addressed to end customers. Those goods are not ready-to-use containers that can thus be purchased by end consumers, but parts and component parts for such containers which must be combined with other items in order to obtain a finished container. As the applicant correctly submits, such goods target a professional public displaying a high level of attention.
39      As regards the other goods in Classes 8, 16, 20 and 21 covered by the international registration at issue, the parties do not call into question the Board of Appeal’s assessments as regards the relevant public and its level of attention.
Comparison of the goods
40      According to settled case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and 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 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
41      Goods or services intended for different publics cannot be regarded as substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 56).
42      Complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
43      Where the goods or services covered by the earlier mark include the goods covered by the trade mark application, those goods or services are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited).
Goods at issue in Class 3
44      As regards the goods in Class 3 covered by the international registration at issue, the Board of Appeal took the view, in paragraph 32 of the contested decision, that the Court had found, in paragraph 26 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), that they were identical to the goods in Class 3 covered by the mark that was the subject of the earlier international registration. According to the Board of Appeal, that assessment is final and binding on it.
45      Since it has been held in paragraph 33 above that ‘lipstick cases of metal’ in Class 3 already contain lipstick, it is clear that they are identical to ‘lipstick’ in that same class. If, however, the view is taken that they are empty containers for lipstick, the fact remains that ‘lipstick cases of metal’ are indispensable or important for the use of ‘lipstick’, and vice versa, with the result that those goods are complementary within the meaning of the case-law cited in paragraph 42 above.
46      In any event, the applicant and EUIPO correctly note that paragraph 26 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), concerned only ‘essential oils’ and ‘cosmetics’. In concluding, in paragraph 32 of the contested decision, that the Court had taken the view, in paragraph 26 of that judgment, that all of the goods at issue in Class 3, and not only ‘essential oils’ and ‘cosmetics’, were identical and that it was bound by the assessment thus made by the Court, the Board of Appeal erred.
Goods at issue in Class 8
47      As regards the goods in Class 8 covered by the international registration at issue, namely ‘eyelash curlers’, the Board of Appeal concluded, in paragraph 39 of the contested decision, that they were included in the broader category of ‘hand-operated tools’ in that same class covered by the mark that was the subject of the earlier international registration. ‘Eyelash curlers’ are tools operated by hand, which give lashes a nice curve so that the eyes look more attractive. The goods at issue are therefore identical.
48      The parties do not dispute that assessment by the Board of Appeal.
Goods at issue in Class 16
49      As regards the goods in Class 16 covered by the international registration at issue, the Board of Appeal took the view, first, in paragraph 40 of the contested decision, that ‘brushes [paintbrushes]; paintbrushes; parts and component parts for all the aforesaid goods’ were used to apply paint or possibly ink. They are not intended for cosmetics and are therefore dissimilar to the goods covered by the mark that was the subject of the earlier international registration.
50      Secondly, the Board of Appeal took the view, in paragraph 41 of the contested decision, that ‘cardboard boxes, boxes of paper; parts and component parts for all the aforesaid goods’ were identical to the ‘soap boxes’ in Class 21 covered by the mark that was the subject of the earlier international registration. ‘Soap boxes’ are goods made of paper or cardboard. In addition, ‘cardboard boxes, boxes of paper; parts and component parts for all the aforesaid goods’ are often used for organising or packaging household goods, so that they fall within the broader category of ‘containers for household or kitchen’, ‘household and kitchen utensils’ and ‘household implements’ in Class 21 covered by the mark that was the subject of the earlier international registration.
51      Thirdly, the Board of Appeal took the view, in paragraph 42 of the contested decision, that the ‘pots made of cardboard; pot holders of paper; parts and component parts for all the aforesaid goods’ covered by the international registration at issue and the ‘drink containers’ covered by the mark that was the subject of the earlier international registration in Class 21 were similar to an average degree. They can be made of the same material and produced in the same way, and they also satisfy the same demand. They are of the same nature (made of paper), can be used to contain a liquid and are likely to be produced by the same manufacturer.
52      Fourthly, the Board of Appeal took the view, in paragraph 43 of the contested decision, that the ‘plastic materials for packaging, namely, bags, sachets, films, and sheets’ and the ‘cardboard packaging; paper packaging; parts and component parts for all the aforesaid goods’ covered by the international registration at issue and the ‘household and kitchen utensils’ in Class 21 covered by the mark that was the subject of the earlier international registration were similar to an average degree. Those goods are of the same nature (made of plastic, glass, aluminium, metal or wood), have the same intended purpose (packaging and storage being central to the organisation of a household) and are sold in the same sales outlets (supermarkets, do-it-yourself stores or ‘one-euro’ stores).
53      Fifthly, in paragraph 44 of the contested decision, the Board of Appeal took the view that there was no similarity between the ‘cardboard tubes; tubes of paper’ covered by the international registration at issue and any of the goods covered by the mark that was the subject of the earlier international registration. Those goods are therefore dissimilar.
54      The parties do not dispute those assessments by the Board of Appeal.
Goods at issue in Class 20
55      As regards the goods in Class 20 covered by the international registration at issue, the Board of Appeal took the view, first, in paragraph 46 of the contested decision, that the ‘packaging containers of plastic; boxes of plastic; packaging containers and packaging, of plastic; cylinders, boxes, containers of plastic; closures not of metal for containers; plastic closures for containers; closures for sealing containers made of plastic; caps, caps and sealing devices, of plastic for containers, and packaging; plastic stoppers for dispensers; sealing and secondary sealing caps not of metal; cosmetics (not of metal); applicators of plastic and not of metal for attachment to containers for dispensing the content of said containers; covers and closures, not of metal, for containers, jars and bottles; boxes of plastic; parts and component parts for all the aforesaid goods’ covered by the international registration at issue and the ‘household and kitchen utensils’ in Class 21 covered by the earlier international registration were similar to an average degree. Those goods are of the same nature (they are ‘kitchen utensils’, which are often made of plastic), are all intended for use in the kitchen, in particular for the storage and preservation of food, and are sold in the same retail outlets to the same type of consumers.
56      Secondly, the Board of Appeal took the view, in paragraph 47 of the contested decision, that the ‘plastic packaging containers, for cosmetics, beauty, perfumery, and hygiene’ covered by the international registration at issue and the ‘containers for household or kitchen’ and ‘soap boxes’ in Class 21 covered by the mark that was the subject of the earlier international registration were similar to an average degree. They can all be used for the storage and preservation of cosmetic, beauty or hygiene products.
57      Thirdly, the Board of Appeal took the view, in paragraph 48 of the contested decision, that the ‘packaging containers, not of metal, for industrial and commercial purposes’ covered by the international registration at issue were dissimilar to the goods covered by the mark that was the subject of the earlier international registration.
58      The parties do not dispute those assessments by the Board of Appeal.
Goods at issue in Class 21
59      As regards the goods in Class 21 covered by the international registration at issue, the Board of Appeal took the view, first, in paragraph 49 of the contested decision, that the ‘paintbrushes and mascara brushes for cosmetics; applicators for mascara and cosmetics (paintbrushes); parts and component parts for all the aforesaid goods’ covered by that registration were
highly similar to the ‘powder brushes’, ‘brushes for body and beauty care’, ‘brush wares’, ‘cosmetic utensils’, ‘nail brushes’ and ‘shaving brushes’ in Class 21 covered by the mark that was the subject of the earlier international registration. Those goods are of the same nature, are used for the application of make-up or face paint, are manufactured by the same entities and are sold in supermarkets, drug stores, pharmacies and clothes shops.
60      Secondly, the Board of Appeal took the view, in paragraph 50 of the contested decision, that the ‘combs and sponges; vaporizers for perfumes and cosmetic; powder compacts; soap boxes; brushes (except paintbrushes); brush-making materials’ covered by the international registration at issue are equally included in the list of goods in Class 21 covered by the mark that was the subject of the earlier international registration.
61      Thirdly, as regards the ‘vaporizers for beauty and hygiene products’ covered by the international registration at issue and the ‘perfume vaporizers’ in Class 21 covered by the mark that was the subject of the earlier registration, the Board of Appeal took the view, in paragraph 51 of the contested decision, that they were highly similar, since beauty products include perfumes.
62      Fourthly, the Board of Appeal took the view, in paragraph 52 of the contested decision, that the ‘cosmetic applicators; sprayers for perfumes and cosmetic, beauty and hygiene products; soap dispensers; brushes (except paintbrushes), brushes and brush instruments for mascara and cosmetic products; brushes and paintbrushes for mascara; brushes for eyelashes; brushes for beauty care; cosmetic brushes and paintbrushes; cosmetic utensils, namely sponges, powder puffs, eyebrow brushes and paintbrushes; stoppers of glass, porcelain and earthenware; all these products not of precious metal, or coated therewith’ covered by the international registration at issue are included in the category of ‘cosmetic utensils’ in Class 21 covered by the mark that was the subject of the earlier international registration, and are therefore identical to the latter.
63      Fifthly, in paragraph 53 of the contested decision, the Board of Appeal took the view that the ‘products for body and beauty care’ covered by the international registration at issue were identical to the ‘cosmetics’ in Class 3 covered by the mark that was the subject of the earlier international registration.
64      Sixthly, in paragraph 55 of the contested decision, the Board of Appeal took the view that the ‘utensils and containers for applying hair dye (included in this class)’ covered by the international registration at issue were similar to an average degree to the ‘bleaching preparations for cosmetic purposes; hair bleach; dying substances for toiletry use; hair dying substances’ in Class 21 covered by the earlier international registration, since hair dyes are generally offered together with utensils and containers for applying hair dye; those goods are therefore
complementary.
65      As regards, seventhly, the ‘pump dispensers for dentifrices, for cosmetics, beauty, perfumery and hygiene products’ covered by the international registration at issue and the ‘aerosol vaporizers, not for medical purposes; perfume vaporizers; cleaning equipment, hand-operated; soap holders, dishes; soap dispensers; toiletry apparatus’ covered by the mark that was the subject of the earlier international registration in Class 21, the Board of Appeal took the view, in paragraph 56 of the contested decision, that they were highly similar, since those goods are of the same nature, perform the same function and meet and satisfy the same demand, namely to provide consumers with the desired liquid.
66      Eighthly, the Board of Appeal took the view, in paragraph 57 of the contested decision, that the ‘vials, bottles [not of metal]’ covered by the international registration at issue were included in the goods ‘glassware, porcelain and earthenware [not included in other classes]’ in Class 21 covered by the mark that was the subject of the earlier international registration. Those goods are therefore identical.
67      Ninthly, in paragraph 59 of the contested decision, the Board of Appeal took the view that the ‘dispensers of plastic materials for cosmetic, beauty, perfumery and hygiene products; plastic pumps not of metal to be fixed on aerosols and other containers; pumps for perfumes and cosmetic products (not of metal); metal pumps for perfumes and cosmetics; pumps of metal for attaching to aerosols and other containers; pumps for pump dispensers for cosmetic products, beauty, perfumery, hygiene, metal pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, plastic pumps to be fixed to aerosols, on containers and tubes in cosmetics, beauty, perfumery, hygiene, metal or plastic devices to be fixed to containers for dispensing the content of said containers; parts and component parts for all the aforesaid goods’ covered by the international registration at issue and the ‘cosmetic utensils’ and ‘toiletry apparatus’ in Class 21 covered by the mark that was the subject of the earlier international registration are highly similar. They are all utensils or apparatus for use with hygiene, toiletry and cosmetic goods. They are manufactured by the same specialist undertakings.
68      Tenthly, the Board of Appeal took the view, in paragraph 60 of the contested decision, that the ‘toilet cases’ covered by the international registration at issue and the ‘cosmetic utensils’ in Class 21 covered by the mark that was the subject of the earlier international registration were very similar, since the former are used to carry such utensils.
69      The parties do not dispute the Board of Appeal’s assessments set out in paragraphs 59 to 68 above.
70      However, the applicant disputes the Board of Appeal’s finding in paragraph 54 of the contested decision that ‘boxes of glass’ and ‘flasks’ are identically listed amongst the goods in Class 21 covered by the international registrations at issue.
71      In that regard, the applicant is correct to submit that ‘boxes of glass’ and ‘flasks’ are not listed amongst the goods covered by the mark that was the subject of the earlier international registration. The Board of Appeal could not therefore take the view that those goods were identically included in the list of goods covered by the international registrations at issue.
72      In so far as EUIPO contends that those goods are included in the category of ‘glassware’, which is in fact covered by the mark that was the subject of the earlier international registration, it must be observed that the ‘flasks’ covered by the international registration at issue are not necessarily made of glass. Since the international registration at issue also covers ‘vials, not of metal’ (see paragraph 66 above), it follows that flasks may also be made of metal. Consequently, the argument put forward by EUIPO also cannot lead to the finding that ‘flasks’ and one of the goods covered by the mark that was the subject of the earlier international registration are identical.
73      By contrast, it is apparent from the actual designation of the ‘boxes of glass’ covered by the international registration at issue that they are in fact ‘glassware’. Those goods are therefore identical.
74      Furthermore, in paragraph 58 of the contested decision, the Board of Appeal took the view that the ‘tubes, squeeze tubes not of metal; tubes or vials of lip salve (cosmetics); tubes and lipstick cases, powder compacts, containers for eye-liner, containers for cosmetic lip gloss (cosmetics), mascara containers; bottles and flasks of cosmetics and care of plastic’ covered by the international registration at issue were included in ‘cosmetic utensils’ in Class 21 and were therefore identical to those goods covered by the mark that was the subject of the earlier international registration.
75      However, the applicant submits that the ‘cosmetic utensils’ covered by the mark that was the subject of the earlier international registration are used for applying cosmetics, whereas the ‘tubes, squeeze tubes not of metal; tubes or vials of lip salve (cosmetics); tubes and lipstick cases, powder compacts, containers for eye-liner, containers for cosmetic lip gloss (cosmetics), mascara containers; bottles and flasks of cosmetics and care of plastic’ are containers.
76      In that regard, it must be noted that the list of goods covered by the mark that was the subject of the earlier international registration also includes ‘household and kitchen utensils and containers’ in Class 21. Even though the ordinary meaning of the word ‘utensil’ may include at least certain types of containers, it follows from that context that, unlike ‘household and kitchen utensils and containers’, ‘cosmetic utensils’ do not include containers. That consideration is supported by the fact that the German mark on the basis of which the intervener obtained the earlier international registration covers ‘kosmetische Geräte’, which, unlike ‘Geräte und Behälter für Haushalt und Küche’, cannot include containers.
77      The argument put forward by EUIPO that, for a large number of goods, it is not possible to distinguish between the container and the applicator, since those are one and the same item, also does not mean that those goods are identical. While it is true that certain containers for cosmetics already include an applicator, such as, for example, paint brushes for nail varnish or for mascara, the relevant public will always perceive those items as containers and not as applicators. As has already been held in paragraph 76 above, containers are not included in the designation ‘cosmetic utensils’ covered by the earlier international registration.
78      The intervener’s argument that containers are sold over the internet as ‘cosmetic utensils’ must also be rejected. The documents that the intervener submitted in support of that argument relate to the result of a search for a ‘cosmetic container’ and not for ‘cosmetic utensils’. In the light of the considerations set out in paragraph 75 above, the intervener is not justified either in maintaining that ‘cosmetic utensils’ include containers that enable, in particular, the mixing, making and storage of cosmetic substances and mixtures at home.
Comparison of the signs
79      As regards the comparison of the signs at issue, the Board of Appeal noted in paragraph 62 of the contested decision that, in the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204, paragraphs 37, 39 and 41), the Court had concluded that the signs at issue were visually and phonetically similar to a low degree and that they were not conceptually similar. It correctly took the view in that paragraph of the contested decision that, since the judgment of the Court had become final, it was bound by that assessment.
Likelihood of confusion
80      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, 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).
81      As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), 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 high 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).
82      The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).
83      In the present case, the Board of Appeal examined, in paragraphs 63 to 73 of the contested decision, the evidence adduced by the intervener in support of its claim relating to the enhanced distinctiveness of the mark that was the subject of the earlier international registration ‘in relation to cosmetic products and cosmetic-related products’ (paragraph 66 of the contested decision). It concluded from that examination, in paragraph 73 of the contested decision, that ‘the [intervener] ha[d] proven that [the mark that was the subject of the earlier international registration] enjoy[ed] an enhanced reputation in Germany in relation to cosmetics’.
84      As regards the goods covered by the registration at issue in Classes 3, 8, 16, 20 and 21 which it considered to be identical, highly similar or similar to an average degree to the goods covered by the mark that was the subject of the earlier international registration (see paragraphs 44, 47, 50 to 52, 55, 56, 59 to 68, 70 and 74 above), the Board of Appeal concluded, in paragraph 74 of the contested decision, in the light of a normal level of attention, that, taking account of the enhanced distinctiveness of the mark that was the subject of the earlier international registration, there was a likelihood of confusion despite the low degree of similarity between the signs at issue.
85      As regards, in particular, the ‘brushes [paintbrushes]; paintbrushes; parts and component parts for all the aforesaid goods’ and the ‘cardboard tubes; tubes of paper’ in Class 16 (see paragraphs 49 and 53 above) and the ‘packaging containers, not of metal, for industrial and commercial purposes’ in Class 20 (see paragraph 57 above), which the Board of Appeal considered to be dissimilar to goods covered by the mark that was the subject of the earlier international registration, it took the view, in paragraph 79 of the contested decision, that there was no likelihood of confusion between the international registrations at issue.
86      As regards the goods referred to in paragraph 84 above, the applicant and EUIPO correctly note that, in paragraph 73 of the contested decision, the Board of Appeal took the view that the mark that was the subject of the earlier international registration enjoyed an enhanced reputation in Germany only in relation to cosmetics.
87      In that regard, the intervener contends, in essence, that the Board of Appeal accepted enhanced distinctiveness not only for ‘cosmetics’, but also for cosmetic-related products.
88      It is indeed true that, in paragraph 66 of the contested decision, the Board of Appeal stated that it was going to examine the evidence adduced by the intervener in support of its claim relating to the enhanced distinctiveness of the mark that was the subject of the earlier international registration ‘in relation to cosmetic products and cosmetic-related products’ and that that evidence may have concerned not only cosmetic products, but also cosmetic-related products. However, contrary to what the intervener contends, it cannot be inferred from that that the Board of Appeal’s assessment that that mark did in fact enjoy an enhanced reputation in Germany in relation to ‘cosmetics’ also applied to cosmetic-related products.
89      On the contrary, if the Board of Appeal had intended to recognise a highly distinctive character not only for cosmetics, but also for cosmetic-related products, it should have expressly mentioned the latter, as it did cosmetics, in paragraph 73 of the contested decision.
90      Consequently, it must be concluded that the Board of Appeal’s finding that the mark that was the subject of the earlier international registration had a highly distinctive character relates only to ‘cosmetics’.
91      The other arguments put forward by the intervener cannot call that finding into question. First of all, in so far as it submits that the reputation of a mark will be associated by the relevant public with other goods that are closely related to the goods for which a mark has a reputation, such as, in the case of cosmetic products, packaging, containers and other accessory components, it must be stated that the Board of Appeal found that the mark that was the subject of the earlier international registration had a highly distinctive character only in relation to cosmetic products. Next, in so far as the intervener argues that a cosmetic product is almost always presented as a unit together with the associated container, it is sufficient to note that, in the mind of the relevant public, it would still be a finished cosmetic product and not a container. The relevant public will not perceive a ready-to-use container filled with cosmetic products as a container. Lastly, it is irrelevant that marks covering cosmetic products often also cover corresponding cosmetic-related products. In order to be able to take account of a highly distinctive character of an earlier mark in the global assessment of whether there is a likelihood of confusion, it is always necessary to establish its existence separately in relation to each category of goods for which that earlier mark is registered.
92      As regards cosmetic products, the applicant is wrong to refer to the definition thereof in Article 2(1)(a) of Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products (OJ 2009 L 342, p. 59). As correctly noted, in essence, by EUIPO and the intervener, the classification of goods according to other rules of EU law, such as Regulation No 1223/2009, is not in principle decisive with regard to their classification in the context of EU trade mark law (see, to that effect, judgment of 25 June 2020, Dermavita v EUIPO – Allergan Holdings France (JUVÉDERM), T‑104/19, not published, EU:T:2020:283, paragraphs 25 to 28).
93      As is also correctly submitted, in essence, by the applicant and EUIPO, in order to be able to take account of the highly distinctive character, which it found for cosmetic products alone, in relation to all of the goods referred to in paragraph 84 above, it was for the Board of Appeal to determine, from the point of view of the relevant public, whether all of those goods are in fact cosmetic products.
94      In that regard, it must be stated that the ‘cosmetics; beauty products; mascaras; make-up products; lipsticks’ in Class 3 covered by the international registration at issue are, in any event, cosmetic products. As ‘lipstick cases of metal’ in Class 3 already contain lipstick (see paragraph 33 above), those goods are also ready-to-use cosmetic products. For all of those goods in Class 3, which are cosmetic products, the Board of Appeal was therefore justified in taking account of a highly distinctive character of the mark that was the subject of the earlier international registration.
95      By contrast, it erred in taking account of such a distinctive character also for the other goods in respect of which it annulled the decision of the Opposition Division. It should have either expressly
found that the mark that was the subject of the earlier international registration had a highly distinctive character in relation to a category of goods in which those goods are included, for example, cosmetic-related products, or explained why some of those goods also belong to the category of cosmetic products.
96      Without being able to take account of such a highly distinctive character, in the light of the average (see paragraphs 35 and 39 above) or even high (see paragraph 38 above) level of attention of the relevant public and of the low degree of visual and phonetic similarity of the signs at issue, and of the absence of conceptual similarity (see paragraph 79 above), overall there is no likelihood of confusion, notwithstanding the degree of similarity or even identity of the goods at issue. Thus, the error made by the Board of Appeal as regards the taking into account of a highly distinctive character had a decisive influence on the Board of Appeal’s assessment under Article 8(1)(b) of Regulation No 207/2009, so that the single plea in law must be upheld and the contested decision annulled to that extent.
97      As regards, by contrast, the goods in Class 3 for which the Board of Appeal was justified in taking account of such a highly distinctive character, namely ‘cosmetics; beauty products; mascaras; make-up products; lipsticks’ (see paragraph 94 above), it must be borne in mind that the Board of Appeal did not carry out a detailed assessment of the degree of similarity of the goods at issue in Class 3 (see paragraph 46 above). In the absence of such a detailed examination of one of the factors to be taken into account, its assessment of whether there is a likelihood of confusion as regards those goods is vitiated by errors. The single plea in law must therefore be upheld and the contested decision must also be annulled as regards those goods.
98      However, as it was in fact bound by the finding made by the Court in paragraph 26 of the judgment of 28 March 2019, ALBÉA (T‑562/17, not published, EU:T:2019:204), that the ‘cosmetics’ covered by the international registration at issue were identical to the goods covered by the mark that was the subject of the earlier international registration (see paragraph 46 above) and in the light of the fact that it could indeed take account of a highly distinctive character for those goods (see paragraph 94 above), the Board of Appeal correctly established all the factors to be taken into account for the global assessment of the likelihood of confusion as regards ‘cosmetics’.
99      In the light of the average level of attention of the relevant public (see paragraph 35 above), of the identity of the goods at issue and of the highly distinctive character of the mark that was the subject of the earlier international registration for those goods, the Board of Appeal was justified in concluding that, despite a low degree of visual and phonetic similarity between the signs at issue and notwithstanding the absence of conceptual similarity (see paragraph 79 above), overall there was a likelihood of confusion as regards ‘cosmetics’. To that extent the single plea in law and the action must be dismissed.
100    As the intervener correctly submits, the case-law of the Court relied on by the applicant does not call that outcome into question. Unlike in the present case (see paragraph 79 above), in the judgment of 8 October 2014, Laboratoires Polive v OHIM – Arbora & Ausonia (dodie) (T‑122/13 and T‑123/13, not published, EU:T:2014:863), the Court found that there was no visual similarity between the signs at issue and that there was only a low, if not a very low, degree of phonetic similarity between them (see, respectively, paragraphs 41 and 50 of that judgment). In the judgment of 19 June 2019, Marriott Worldwide v EUIPO – AC Milan (AC MILAN) (T‑28/18, not published, EU:T:2019:436), the Court stated that its assessment was based above all on the conceptual dissimilarity between the signs at issue (see paragraph 115 of that judgment). However, in the present case, although the signs at issue are not conceptually similar (see paragraph 79 above), they are not conceptually dissimilar either.
101    In the light of the foregoing, the single plea in law must therefore be upheld and the contested decision annulled to the extent that it annulled the decision of the Opposition Division, except in so far as it annulled the decision of the Opposition Division as regards ‘cosmetics’ in Class 3. Consequently, the single plea in law must be rejected as to the remainder.
Costs
102    Under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party, the Court is to decide how the costs are to be shared. In the present case, it must be decided that, in accordance with its form of order and that of the applicant, EUIPO must pay the costs of the applicant and bear its own costs. Since the intervener has been largely unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 September 2019 (Case R 1480/2019‑2) to the extent that it annulled the decision of the Opposition Division, except in so far as it annulled the decision of the Opposition Division as regards ‘cosmetics’ in Class 3;
2.      Dismisses the remainder of the action;
3.      Orders EUIPO to bear its own costs and to pay those incurred by Albéa Services;
4.      Orders dm-drogerie markt GmbH & Co. KG to bear its own costs.
Collins
Kreuschitz
De Baere
Delivered in open court in Luxembourg on 15 September 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.