JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
11 May 2022 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – EU figurative mark SK SKINTEGRA THE RARE MOLECULE – Earlier national word mark SKINTEGRITY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑93/21,
Creaticon d.o.o., established in Zagreb (Croatia), represented by P. Krmpotić, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Paul Hartmann AG, established in Heidenheim (Germany),
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, U. Öberg (Rapporteur) and R. Mastroianni, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        By its action under Article 263 TFEU, the applicant, Creaticon d.o.o., seeks the annulment and modification
of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 December 2020 (Case R 847/2020-5) (‘the contested decision’).
2        On 16 January 2018, the applicant obtained international registration designating the European Union No 1424199
from the International Bureau of the World Intellectual Property Organization (WIPO). That international registration was notified to the European Union Intellectual Property Office (EUIPO) on 27 September 2018 pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). The mark which is the subject of the international registration designating the European Union is the following figurative sign:
3        The goods and services in respect of which registration was sought are in, inter alia, Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Lip balms [non-medicated]; balms, other than for medical purposes; balms, other than make-up base cream; beauty balm creams; decorative cosmetics; dermatological creams [other than medicated]; antiperspirants [toiletries]; deodorants and antiperspirants; deodorants for human beings; personal deodorants; body deodorants [perfumery]; functional cosmetics being skin care preparations; after-shave gel; shaving gel; shower and bath gel; shaving gel; cleansing gels; hair gel; gels for cosmetic use; bath gel; bath and shower gels, not for medical purposes; bath gel; face gels; massage gels, other than for medical purposes; hand gels; body gels; body and facial gels [cosmetics]; shower gels; aftershave moisturising cream; cosmetic moisturisers; anti-aging moisturizers; facial moisturisers [cosmetic]; after sun moisturisers; hydrating masks; anti-aging moisturizers used as cosmetics; moisturising body lotion [cosmetic]; hair moisturisers; skin emollients; moisturising skin creams [cosmetic]; moisturising gels [cosmetic]; moisturising concentrates [cosmetic]; moisturising skin lotions [cosmetic]; cosmetic nourishing creams; cosmetic nourishing creams; solid powder for compacts [cosmetics]; pressed face powder; bath concentrates (non-medicated -); facial concealer; concealers; concealers for spots and blemishes; under-eye enhancers; cosmetic preparations for skin care; cosmetics for use in the treatment of wrinkled skin; oils for cosmetic purposes; cosmetic creams and lotions; body and facial creams [cosmetics]; cosmetic hand creams; cosmetic creams for firming skin around eyes; beauty lotions; cosmetic hair lotions; cosmetic suntan lotions; cosmetic body scrubs; cosmetics containing panthenol; sun blocking preparations [cosmetics]; cosmetic preparations for skin firming; cosmetic preparations for the hair and scalp; cosmetic preparations for baths; cosmetic preparations for bath and shower; facial preparations; cosmetic preparations for body care; cosmetic preparations for skin renewal; cosmetic sun-protecting preparations; cosmetics; cosmetics containing hyaluronic acid; cosmetics in the form of gels; cosmetics in the form of creams; cosmetics in the form of milks; cosmetics in the form of powders; cosmetics in the form of lotions; cosmetics in the form of oils; cosmetic moisturisers; cosmetics for use on the skin; cosmetics for the use on the hair; cosmetic products in the form of aerosols for skincare; cosmetics for personal use; cosmetics for the treatment of dry skin; cosmetic products for the shower; powder for make-up; cosmetic face powders; beauty soap; cosmetic soaps; beauty serums; cosmetics; cosmetics and cosmetic preparations; cosmetics for children; cosmetic preparations for skin care; beauty care cosmetics; lip cosmetics; anti-wrinkle cream; shaving cream; skin cleansing cream; skin cleansing cream [non-medicated]; hair creams; skin cream; face creams for cosmetic use; face cream (non-medicated -); microdermabrasion polish; eye-cream; hand creams; sun creams; fair complexion cream; body cream; lip cream; sun-tanning creams and lotions; cosmetic creams; moisturising creams, lotions and gels; aftershave creams; creams (non-medicated-) for the eyes; creams (non-medicated-) for the body; after sun creams; pre-shave creams; creams for cellulite reduction; anti-aging creams; shaving cream; cleansing creams; day creams; depilatory creams; hair creams; cosmetic creams; skin cream; non-medicated skin creams; bath creams (non-medicated -); face creams for cosmetic use; face creams for cosmetic use; face creams for cosmetic use; hair care creams; skin cream; cold cream; skin care creams [cosmetic]; skin care creams, other than for medical use; skin conditioning creams for cosmetic purposes; exfoliant creams; pre-shave creams; make-up removing creams; suntan creams; baby suncreams; fair complexion creams; creams for tanning the skin; body cream; shower creams; creams for fixing hair; creams for firming the skin; hair protection creams; sunscreen cream; sun protecting creams [cosmetics]; cakes of soap for body washing; bath bombs; baby lotions; skin cleansing lotion; hand lotion (non-medicated -); sunscreen preparations; suntan lotion [cosmetics]; toning lotion, for the face, body and hands; age retardant lotion; after-shave preparations; after-sun lotions; eye wrinkle lotions; baby lotions; colouring lotions for the hair; shaving lotion; cleansing lotions; lotions for cosmetic purposes; bath lotion; cosmetic facial lotions; hand lotions; make-up removing lotions; suncare lotions; body lotions; after-shave preparations; facial masks; clay skin masks; cleansing masks; cleaning masks for the face; skin moisturizer masks; hair masks; skin masks [cosmetics]; body masks; facial butters; body oils [for cosmetic use]; scented body lotions and creams; perfumed lotions [toilet preparations]; perfumed body lotions [toilet preparations]; scented body lotions; perfumed powder [for cosmetic use]; scented soaps; scented body spray; milky lotions for skin care; cleansing milks for skin care; hand milks; tanning milks [cosmetics]; body milks; cleansing milk for toilet purposes; facial cleansing milk; cleansing milk for toilet purposes; cleansing milk for toilet purposes; bath milk; sun tan milk; non-medicated cleansing creams; non-medicated skin creams; non-medicated cosmetics; non-medicated moisturisers; non-medicated creams; non-medicated scalp treatment cream; balms, other than for medical purposes; non-medicated-skin clarifying lotions; balms, other than for medical purposes; skin care creams, other than for medical use; non-medicated beauty preparations; bath preparations, not for medical purposes; non-medicated face care preparations; night cream; night creams [cosmetics]; body splash; skin fresheners; exfoliating scrubs for the face; body scrub; facial scrubs [cosmetic]; face scrubs (non-medicated -); exfoliating scrubs for the hands; exfoliating scrubs for the feet; shaving foam; bath foam; foaming bath gels; shaving foam; skin cleansing foams; body cleansing foams; bath foam; bath foams (non-medicated -); shaving foam; foams for use in the shower; bubble bath; lip balms [non-medicated]; facial cleansers [cosmetic]; hair conditioners; skin, eye, nail care creams preparations; after-shave lotions; foot care preparations (non-medicated -); scalp treatments (non-medicated -); sun blocking preparations [cosmetics]; sunscreen preparations; after-shave preparations; aloe vera preparations for cosmetic purposes; collagen preparations for cosmetic application; anti-aging skincare preparations; antiperspirants [toiletries]; cleaning agents for the hands; moisturising preparations; sun care preparations; hair preparations and treatments; hair care preparations, not for medical purposes; skin care preparations; wrinkle removing skin care preparations; facial care preparations; non-medicated body care preparations; non- medicated lip care preparations; facial peel preparations for cosmetic use; make-up removing preparations; hair removal and shaving preparations; hair grooming preparations; natural oils for cosmetic purposes; make-up preparations for the face and body; shaving preparations; moisturizers; skin moisturisers; hair dressings for men; lip protectors (non-medicated); lip protectors [cosmetic]; face powder; loose face powder; body powder; retinol cream for cosmetic purposes; dandruff shampoos, not for medical purposes; baby shampoo mousse; baby shampoo; shampoos; body shampoos; hair shampoo; dandruff shampoo; shampoo-conditioners; shampoo bars; shampoo for human hair [non-medicated]; shampoos for human hair; shampoos for personal use; body washes; shaving soap; skin soap; bath soap; shower soap; soaps in gel form; cakes of toilet soap; soaps and gels; soaps in gel form; cakes of toilet soap; shaving soap; facial soaps; soaps for body care; hand soaps; anti-ageing serum; hair serums; serums for cosmetic purposes; non-medicated skin serums; facial serum for cosmetic use; hair care serums; hairstyling serums; make-up preparations; make-up for the face; body sprays; hand cleansers; body moisturisers; hair nourishers; hair rinses [shampoo-conditioners]; hair preparations and treatments; exfoliants; exfoliating scrubs for the body; exfoliants for the cleansing of the skin; exfoliating scrubs for cosmetic purposes; exfoliants for the care of the skin; skin texturizers; skin texturizers; hand washes; sun-tanning preparations [cosmetics]; shower preparations; cleaning agents for the hands; dry shampoos; make-up foundations; soaps in liquid form; soaps in liquid form; liquid soaps for hands and face; toners for cosmetic use; tonics [cosmetic]; hair tonic; non-medicated skin toners; beauty tonics for application to the face; facial beauty tonics [cosmetic]; hair tonic; hair tonic [non-medicated]; facial toners [cosmetic]; hair preservation treatments for cosmetic use; emollients; oils for hair conditioning; face oils; body and facial oils; massage oils; facial massage oils; massage oils, not medicated; body massage oils; skin care oils [cosmetic]; skin care oils [non-medicated]; skin care oils [non- medicated]; hand oils (non-medicated -); sun-tanning oils; after-sun oils [cosmetics]; suntan oils for cosmetic purposes; body oils [for cosmetic use]; bath oil; massage oils; sun-tanning oils; after-sun oils [cosmetics]; body oils [for cosmetic use]; body oil spray; hair fixing oil; petroleum jelly for cosmetic purposes; sunblock; sun protectors for lips; barrier creams.’
4        On 10 January 2019, Paul Hartmann AG filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for, in respect inter alia of all the goods referred to in paragraph 3 above, claiming that there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
5        The opposition was based on the following earlier rights:
–        the German word mark SKINTEGRITY, filed on 17 January 2013 and registered under number 302013012129 on 18 March 2013 for goods in Classes 5, 10 and 25 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical products; pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene; sanitary preparations for medical use; napkins, napkin liners, napkin pants and absorbent pads for the sick and incontinent; dietetic substances for medical use; plasters, materials for dressings; materials for dressings, including with x-ray contrast material or detection chips, x-ray contrast material; disinfectants; cotton wool and cotton wool products for medical and hygienic purposes; cotton wool or cellulose tissues impregnated with disinfectant preparations and/or oil and/or cleaning preparations for medical or sanitary purposes; first-aid material, namely materials for dressings, pharmaceutical preparations being parts for sets and refill packs equipped with these goods; filled first aid boxes; pants, woven and/or knitted with textile thread or consisting of cellulose, for the fixing of absorbent pads, all the aforesaid goods for incontinency purposes; dressing changing sets, namely materials for dressings, plasters, compresses, swabs, tampons, being parts for dressing changing sets; catheter sets, namely pharmaceutical preparations, materials for dressings, pharmaceutical preparations for body care, for skin protection and cleansing, plasters, compresses, swabs, tampons, materials for dressings, including with x-ray contrast material, disinfectants being parts for catheter sets; operating theatre kits, namely pharmaceutical preparations, materials for dressings, materials for dressings, including with x-ray contrast material or detection chips, plasters, compresses, swabs, tampons, bindings, bandages, stomach pads, including with x-ray contrast chips, incision films, incontinence pads, being parts for operating theatre kits’;
–        Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; suture strips for wounds; thermometers for medical use; examination, protective and surgical gloves for medical and surgical purposes; cloths for sterile covering of patients and objects; mouth and nose masks, bed liners of cellulose, nonwovens, plastic, textile fabric and/or rubber for children and invalids; draw-sheets for sick beds and incontinence sheets (included in Class 10); catheters; catheter sets, namely examination, protective and operating gloves for medical and surgical purposes, catheters, urinals, cloths for sterile covering of patients and objects, surgical and medical instruments and apparatus, suture strips for wounds being parts of catheter sets; urinals; suction bags of nonwovens and/or plastic for suction tubes; operating theatre kits, namely examination, protective and operating gloves, catheters, urinals, cloths for sterile covering of patients and objects, surgical and medical instruments and apparatus, spatulas, beakers and bowls, medical filters, suture material, bottles, bags, syringes, cannulae, filter needles, electrodes, drainage tubes and hoses, trocars, suction systems/liquid conduction systems, skin marking pens, needle and blade holders, goods for angiographic interventions, being parts for operating theatre kits, and special containers for medical purposes, namely vessels of plastic, paper or metal foil; first-aid materials, namely medical instruments being parts for sets and refill packs equipped with these goods; clothing especially for operating rooms for disposable and multiple use; dressing changing sets, namely cloths for sterile covering of patients and objects, being parts for dressing changing sets; stomach pads, including with x-ray contrast chips, incision films, vascular snares, being parts for operating theatre kits’;
–        Class 25: ‘disposable and multiple use items of working clothing for medical staff and for patients’;
–        the EU word mark SKINTEGRITY, filed on 14 January 2013 and registered under number 11484144 on 23 June 2016 for goods in Classes 5 and 10 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical products; chemical preparations for skin protection and cleansing for the purposes of personal hygiene; sanitary preparations for medical use; napkins, napkin liners, napkin pants and absorbent pads for the sick and incontinent; dietetic substances for medical use; plasters, materials for dressings; materials for dressings, including with x-ray contrast material or detection chips, x-ray contrast material; disinfectants; cotton wool and cotton wool products for medical and hygienic purposes; cotton wool or cellulose tissues impregnated with disinfectant preparations and/or oil and/or cleaning preparations for medical or sanitary purposes; first-aid material, namely materials for dressings, pharmaceutical preparations being parts for sets and refill packs equipped with these goods; filled first aid boxes; pants, woven and/or knitted with textile thread or consisting of cellulose, for the fixing of absorbent pads, all the aforesaid goods for incontinency purposes; dressing changing sets, namely materials for dressings, plasters, compresses, swabs, tampons, being parts for dressing changing sets; catheter sets, namely pharmaceutical preparations, materials for dressings, chemicals for body care, for skin protection and cleansing, plasters, compresses, swabs, tampons, materials for dressings, including with x-ray contrast material, disinfectants being parts for catheter sets; operating theatre kits, namely pharmaceutical preparations, materials for dressings, materials for dressings, including with x-ray contrast material or detection chips, plasters, compresses, swabs, tampons, bindings, bandages, stomach pads, including with x-ray contrast chips, incision films, vascular snares, incontinence pads, being parts for operating theatre kits’;
–        Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; suture strips for wounds; thermometers for medical use; examination, protective and surgical gloves for medical and surgical purposes; cloths for sterile covering of patients and objects; mouth and nose masks, bed liners of cellulose, nonwovens, plastic, textile fabric and/or rubber for children and invalids; draw-sheets for sick beds and incontinence sheets (included in Class 10); catheters; catheter sets, namely examination, protective and operating gloves for medical and surgical purposes, catheters, urinals, cloths for sterile covering of patients and objects, surgical and medical instruments and apparatus, suture strips for wounds being parts of catheter sets; urinals; suction bags of nonwovens and/or plastic for suction tubes; operating theatre kits, namely examination, protective and operating gloves, catheters, urinals, cloths for sterile covering of patients and objects, surgical and medical instruments and apparatus, spatulas, beakers and bowls, medical filters, suture material, bottles, bags, syringes, cannulae, filter needles, electrodes, drainage tubes and hoses, trocars, suction systems/liquid conduction systems, skin marking pens, needle and blade holders, goods for angiographic interventions, being parts for operating theatre kits, and special containers for medical purposes, namely vessels of plastic, paper or metal foil; first-aid materials, namely medical instruments being parts for sets and refill packs equipped with these goods; disposable and multiple use items of working
clothing for medical staff and for patients; dressing changing sets, namely cloths for sterile covering of patients and objects, being parts for dressing changing sets’.
6        On 24 March 2020, the Opposition Division upheld the opposition in part. After stating that the opposition would be examined in relation to the earlier German mark, it found that there was a likelihood of confusion on the part of the relevant public, on the basis of Article 8(1)(b) of Regulation 2017/1001, and refused registration of the mark applied for in respect of some of the goods in Class 3 covered by it, corresponding to the goods referred to in paragraph 3 above, which it considered to be similar to the ‘disinfectants’ goods in Class 5 covered by the earlier German mark. However, it rejected the opposition as regards the services in Class 44 and certain goods in Class 3, which had been found to be different or similar to a low degree to the goods covered by the earlier German mark. The Opposition Division then extended its finding to the earlier EU trade mark.
7        On 6 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
8        By the contested decision, the Board of Appeal dismissed the appeal. First of all, the Board of Appeal stated that it would examine the opposition in relation to the earlier German mark. It added that, although the Opposition Division’s examination had focused solely on the ‘disinfectants’ goods in Class 5 covered by the earlier German mark, it was appropriate, for the comparison of the goods, to take into account ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene; pharmaceutical preparations for body care, for skin protection and cleansing’. It also found that the relevant territory was that of Germany and that the level of attention of the relevant public was high for the goods covered by the earlier German mark and average for the goods covered by the mark applied for. Next, the Board of Appeal stated that the goods at issue were similar. Lastly, as regards the comparison of the signs at issue, after finding that the word element ‘skintegra’ in the mark applied for was the dominant element, the Board of Appeal concluded that the signs at issue were visually and phonetically similar and conceptually similar for a non-negligible part of the relevant public. It concluded that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001, as regards all the goods covered by the mark applied for. It also stated that, since the opposition was upheld on the basis of the earlier German mark, it was not necessary to examine the opposition on the basis of the other earlier mark.
Procedure and forms of order sought
9        The applicant claims that the Court should:
–        primarily, grant the application for registration of the mark applied for;
–        in the alternative, annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, in that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public. However, it must also be regarded, in the light of the content of its arguments, as also raising a plea alleging that the Board of Appeal infringed its right to be heard.
Plea alleging a breach of the right to be heard
12      The applicant submits that, in drawing conclusions relating to the comparison of the goods at issue with the goods in Class 5 covered by the earlier German mark corresponding to ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’ and no longer to ‘disinfectants’, the Board of Appeal based its decision on new facts not submitted before the Opposition Division. It thus deprived the applicant of the right to submit its observations in that regard and committed a ‘major breach of procedural rules’.
13      EUIPO disputes the applicant’s line of argument.
14      The infringement alleged by the applicant of the ‘procedural rules’ may be interpreted as an alleged infringement of the right to be heard, provided for in the second sentence of Article 94(1) of Regulation 2017/1001 and enshrined, moreover, in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union.
15      Under the second sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision constitutes a specific application of the general principle of protection of the rights of the defence, according to which persons whose interests are affected by decisions of public authorities should be placed in a position in which they may effectively make known their views (judgment of 28 October 2021, Vialto Consulting v Commission, C‑650/19 P, EU:C:2021:879, paragraph 122; see, also, judgment of 13 June 2012, XXXLutz Marken v OHIM – Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 70 and the case-law cited).
16      The right to be heard extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt (see judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P,
EU:C:2012:27, paragraph 53 and the case-law cited).
17      With regard to proceedings before the adjudicating bodies of EUIPO,
Article 71(1) of Regulation 2017/1001 provides that, ‘following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’ and that ‘[it] may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution’.
18      In accordance with settled case-law, there is a ‘functional continuity’ between the different jurisdictions of EUIPO, on the one hand, and the Boards of Appeal on the other. It follows from that functional continuity that, in the review of decisions taken by the departments of EUIPO hearing the application at first instance that the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal. The review undertaken by the Boards of Appeal is not limited to the lawfulness of the contested decision. By the devolutive effect of the appeal proceedings, it requires a re-appraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time. Thus, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal before it, the Boards of Appeal are called upon to carry out a full re-examination of the merits of the opposition, in both law and fact (see judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).
19      The Boards of Appeal therefore have the power to carry out of their own motion a full review of the merits of the opposition and may proceed to compare the products as they see fit, even where the Opposition Division concerned did not consider it necessary to make that comparison (see, to that effect, order of 8 September 2015, DTL Corporación v OHIM, C‑62/15 P, not published, EU:C:2015:568, paragraph 41).
20      In the present case, it should be noted that the applicant submitted, before the Opposition Division, that the goods at issue were not aimed at the same consumers, were not complementary and were not sold via the same distribution channels. It stated, to that effect, that the word mark SKINTEGRITY was used for goods relating to the treatment of the consequences of incontinence, which had no connection with facial cosmetics covered by the mark applied for. Thus, like EUIPO, the Court considers that the applicant was able, to the requisite legal standard, to present its arguments regarding the comparison of the goods at issue before the Opposition Division.
21      Since the opposition was based inter alia on the earlier German mark, registered inter alia for goods in Class 5, the Board of Appeal had the power, in accordance with Article 71(1) of Regulation 2017/2001, to carry out a full re-examination of the merits of the opposition and, in that context, to compare the goods covered by the mark applied for with other goods in Class 5 covered by the earlier German mark.
22      In that regard, it is apparent from the file of the proceedings before EUIPO that, although the registration certificate for the earlier German trade mark before the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) covered, in its German version, ‘pharmaceutische Erzeugnisse für die Körperpflege zum Schutz und zur Reinigung der Haut’, as is apparent from page 102 of EUIPO’s file, the latter were translated into English by ‘chemical preparations for skin protection and cleansing for the purposes of personal hygiene’, as is apparent from page 111 of that file.
23      That translation was provided by the proprietor of the two earlier marks in an annex to the letter confirming the opposition sent to EUIPO on 2 August 2019. That being so, although the applicant’s arguments were based solely on ‘disinfectants’ analysed by the Opposition Division in its statement of grounds, the Board of Appeal was entitled to take into account and compare other goods in the list of registered goods covered by the earlier German mark, namely ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’.
24      It was open to the applicant, at the appeal stage, to submit additional arguments that it considered relevant in respect of all the goods which were the subject of the opposition, even if the Board of Appeal did not specifically invite it to do so (see, to that effect and by analogy, judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraphs 96 and 97).
25      The Board of Appeal was therefore right to compare the goods covered by the mark applied for with those covered by the earlier German mark in Class 5 corresponding to ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’.
26      It follows from the foregoing that the Board of Appeal did not infringe the applicant’s right to be heard by not expressly inviting it to submit observations on the ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’ in Class 5 and covered by the earlier German mark, on which it based its decision. The applicant’s plea alleging infringement of procedural rules must therefore be rejected.
Plea alleging that there is no likelihood of confusion
27      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.
28      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 similarity of the marks 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).
29      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).
The relevant public
30      The parties do not dispute that the relevant territory is Germany, as found by the Board of Appeal.
31      The Board of Appeal found that the relevant public corresponded to the ‘average consumer’, with a high level of attention when purchasing the goods covered by the earlier German mark and with an average level of attention when purchasing the goods covered by the mark applied for.
32      The applicant submits that the relevant public for the goods covered by the mark applied for is a predominantly younger public
that buys luxury face creams, generally online, which are marketed through social networks. By contrast, the goods covered by the earlier German mark target a different public, in that they tend to treat skin damage, such as wounds, or to provide genital care in cases of incontinence. In addition, the applicant submits that the average consumer displays a high level of attention both when purchasing the goods covered by the earlier German mark and those covered by the mark applied for, given that the latter are exclusive goods within a higher price range.
33      By its arguments, the applicant seeks in reality to demonstrate that there is no similarity between the goods at issue and not to define the relevant public.
34      Moreover, it must be understood that the Board of Appeal referred to the relevant public as corresponding to the general public. The expression ‘average consumer’ must be understood as meaning only the consumer who is part of the public typically targeted by the goods and services in question. Thus, the ‘average consumer’ may be a professional or specialised public, if the goods and services in question are typically intended for such a public (see, to that effect, judgment of 8 November 2017, Steiniger v EUIPO – ista Deutschland (IST), T‑80/17, not published, EU:T:2017:784, paragraph 25).
35      Considering the nature of the goods covered by the mark applied for, the Court also concludes that they are aimed mainly at the general public. However, considering the goods covered by the earlier German mark, it must be concluded that they are also aimed at professional consumers, such as, for example, dermatologists, healthcare staff or skin professionals.
36      Finally, as regards the level of attention of the average consumer, the conclusion of the Board of Appeal that the level of attention is high for the goods covered by the earlier German trade mark, since they are expressly intended for pharmaceutical use, must be confirmed (see, to that effect, judgment of 28 November 2019, August Wolff v EUIPO – Faes Farma (DermoFaes), T‑643/18, not published, EU:T:2019:818, paragraph 27 and the case-law cited).
The comparison of the goods
37      In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
38      In the present case, the Board of Appeal examined the similarity between the goods in Class 3 covered by the mark applied for and the ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’ in Class 5 covered by the earlier German mark.
39      According to the Board of Appeal, the goods at issue have the same purpose, namely to cleanse, take care of or enhance
the beauty of a person’s skin and other body parts. In addition, they may include the same ingredients, such as vitamin C or retinol. The only difference in that regard is the potency and strength of the ingredients, since pharmaceutical products contain a higher percentage of the active ingredients. The nature and intended purpose of those goods are the same. In addition, it is often important to use non-medical cleansers, toners, sun protection products and moisturisers
in conjunction with pharmaceutical-grade treatment and those products are recommended together, for example
by a dermatologist. Furthermore, both types of goods may be available from the same pharmacies and distributed alongside one another. They are therefore similar.
40      The applicant submits that there is no similarity between the goods covered by the marks at issue and that the Board of Appeal completely deviated from earlier decisions in factually identical cases, without providing any explanation in that regard. The goods in Class 3 covered by the mark applied for include cosmetic and body care products intended exclusively for the face and do not have any medical or pharmacological purpose. By contrast, the goods in Class 5 covered by the earlier mark include medical and pharmaceutical products that offer professional mature skin care for people facing the problem of incontinence. The purposes, intent and target public of the goods covered by the marks at issue are therefore completely different. The applicant also submits that the fact that cosmetic and pharmaceutical products share the same distribution channels does not mean that they are complementary.
41      In addition, the applicant claims that the findings in the contested decision regarding the similarity of the goods are incorrect because the ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and the ‘pharmaceutical preparations for body care, for skin protection and cleansing’ examined by the Board of Appeal do not appear
in the list of goods for which the earlier mark is registered. Rather, that mark is registered for ‘chemical preparations for skin protection and cleansing for the purposes of personal hygiene’ and ‘chemical body care products for skin protection and cleansing’. Those goods are not similar to the goods in Class 3 covered by the mark applied for.
42      EUIPO disputes the applicant’s arguments.
43      As a preliminary point, as regards the alleged deviation from previous decisions of EUIPO, the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion.
44      Accordingly, the legality of those decisions must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (judgment of 26 April 2007,
Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65). In the present case, the decisions of EUIPO relied on by the applicant relate to goods with a low degree of similarity and cannot form the basis of the examination of the goods at issue. The applicant’s arguments must therefore be rejected.
45      First, the applicant’s claim that the Board of Appeal referred to goods which do not appear
in the list of goods covered by the earlier mark is based on a misreading of the contested decision.
46      The applicant bases its arguments on the earlier EU trade mark, whereas the contested decision is based on the earlier German mark. Although the registration certificate for the earlier German trade mark was indeed translated into English – the language of the opposition proceedings – as referring to ‘chemical preparations’ (chemical preparations for skin protection and cleansing for the purposes of personal hygiene), the goods covered by the earlier German mark, as is apparent from page 35 of the notice of opposition, do indeed include ‘pharmaceutical products’ (pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene), which the Board of Appeal correctly compared with the goods covered by the application for registration.
47      While it is true that the goods marketed under the mark applied for are luxury facial cosmetics, as the applicant claims, the list of goods also includes other goods, such as, for example, body and hair care preparations. Furthermore, the Court points out that the examination of the goods at issue must be based on the group of goods protected by the marks at issue and not on the goods actually marketed under those marks.
48      Secondly, regarding the similarity of the goods at issue, the Court already held that the ‘pharmaceutical products’ in Class 5 were similar to a low degree to the ‘cosmetics’ in Class 3, since (i) the purpose of certain pharmaceuticals, such as skin or hair care preparations with medical properties, medicated dentifrices and medicated soaps, coincided with the purpose of cosmetic creams or lotions, dentifrices and soaps not for medical use and (ii) both of those types of goods were sold in pharmacies (see, to that effect, judgments of 24 March 2021, Laboratorios Ern v EUIPO – Sanolie (SANOLIE), T‑175/20, not published, EU:T:2021:165, paragraph 44, and of 30 June 2021, Makk v EUIPO – Ubati Luxury Cosmetics (PANTA RHEI), T‑501/20, not published, EU:T:2021:402, paragraph 32 and the case-law cited).
49      That case-law is also applicable to the goods at issue in the present case, since the ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ covered by the earlier German mark provide detail as to their purpose.
50      The ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ covered by the earlier German mark are intended for personal hygiene purposes and for the protection and cleansing of the skin. Although the cosmetic products covered by the mark applied for are not pharmaceutical in nature, they are nevertheless applied to the skin, often in order to protect it and improve its physical appearance (see, to that effect, judgment of 24 March 2021, SANOLIE, T‑175/20, not published, EU:T:2021:165, paragraph 42).
51      While it is true that the goods covered by the mark applied for as ‘functional cosmetics being skin care preparations’, ‘sun-protecting preparations’ and ‘cleansing milks for skin care’ differ from the goods covered by the earlier German mark because of the therapeutic indication of the latter, they share the same objective, that is to say, cleansing, hydrating or protecting the skin. Furthermore, as the Board of Appeal correctly concluded, the goods covered by the signs at issue are likely to incorporate the same ingredients and may also have the same consistency, for example in the form of a cream or gel.
52      In addition, as the Board of Appeal correctly noted, the goods covered by the earlier German trade mark can be sold through the same distribution channels, such as pharmacies, as the goods covered by the trade mark applied for, given that those goods have a medical use, or other specialised shops (see, to that effect and by analogy, judgments of 24 March 2021, SANOLIE, T‑175/20, not published, EU:T:2021:165, paragraph 41 and the case-law cited, and of 15 September 2021, Laboratorios Ern v EUIPO – Le-Vel Brands (Le-Vel), T‑331/20, not published, EU:T:2021:571, paragraph 29).
53      As regards the complementarity of the goods at issue, the Board of Appeal implicitly found, in paragraph 31 of the contested decision, that non-medical cleansing and moisturising products such as those covered by the mark applied for would be used in conjunction with a pharmaceutical-grade treatment.
54      In that regard, goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited; judgment of 22 September 2021, Healios v EUIPO – Helios Kliniken (Healios), T‑591/19, not published, EU:T:2021:606, paragraph 66).
55      On that point, it should be noted that the applicant merely states that the Board of Appeal departed from an earlier decision of EUIPO without adducing any evidence capable of calling into question the Board of Appeal’s assessment in that regard. Therefore, such an assertion, even if proved, must be rejected.
56      Consequently, having regard to the fact, in particular, that the goods at issue have the same nature in part and the same purpose, that they are capable of being marketed through the same distribution channels and that they are complementary, those considerations lead the Court to confirm the Board of Appeal’s findings that the goods at issue are similar.
The comparison of the signs at issue
57      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
58      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).
59      It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
60      It should be pointed out that the greater or lesser degree of distinctiveness of the elements common to the mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited).
61      The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).
–       The distinctive and dominant elements
62      The Board of Appeal found that the Opposition Division had not made an error in comparing the element ‘skintegra’ of the mark applied for, which it describes as the dominant element, with the earlier German mark SKINTEGRITY. In that respect, it found, first, that the hexagonal element in the mark applied for was clearly banal and that it would not attract the attention of the relevant public. In addition, the letters ‘s’ and ‘k’ in the representation of the hexagon merely introduce and draw attention to the term ‘skintegra’. Next, it found that the expression ‘the rare molecule’ was laudatory and not particularly distinctive for the German public understanding English and associating the English word ‘molecule’ with its close German equivalent ‘Molekül’. The relevant public’s attention would be primarily drawn, not by that expression, which is smaller in size and holds a secondary position in the overall scheme of the mark applied for, but by the word element ‘skintegra’.
63      The applicant first of all complains that the Board of Appeal focused exclusively on the element ‘skintegra’ in order to compare it with the earlier German mark, without taking account of the fact that that word is an integral element of the mark applied for, which is also composed of a hexagon, dominated by the letters ‘sk’, and of the three other words ‘the rare molecule’. Next, according to the applicant, the dominant part of the mark is the element ‘sk’ incorporated in the hexagon, the letters of which are stylised in such a way that the consumer is drawn to that part and confers on it a distinctive character.
64      As for the element ‘the rare molecule’, it forms a unity with the element ‘skintegra’ and the letters making up that first element are slightly smaller, as that allows it to be placed under the element ‘skintegra’, following a pyramidal concept in which the hexagonal figurative element is at the top of the pyramid and occupies an important position in the composite trade mark. Lastly, the applicant submits that the word ‘skin’ cannot be the object of independent protection of intellectual property, since it is a common term used in both the cosmetics sector and the pharmaceutical sector.
65      EUIPO disputes the applicant’s arguments.
66      For the purposes of assessing the distinctive and dominant character of the element ‘skintegra’ of the mark applied for, reproduced below, it is necessary to examine the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings:
67      In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (see judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35 and the case-law cited, and of 5 December 2013, Olive Line International v OHIM – Carapelli Firenze (Maestro de Oliva), T‑4/12, not published, EU:T:2013:628, paragraph 48 and the case-law cited; judgment of 11 November 2020, Deutsche Post v EUIPO – Pošta Slovenije (Representation of a stylised horn), T‑25/20, not published, EU:T:2020:537, paragraph 38).
68      Where a mark is composed of word elements and figurative elements, the former are in principle more distinctive than the latter because the average consumer will more easily refer to the services in question by quoting the name of the mark than by describing its figurative element (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 39; see also, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
69      As a preliminary point, it must be noted that, despite the stylisation of the second letter of the word element ‘sk’ and of the second and last letter of the word element ‘skintegra’, the Board of Appeal considered, correctly and without being challenged by the applicant on that point, that those letters were the letter ‘k’ and the letter ‘a’ respectively. Consequently, the Court’s analysis will be carried out on the basis that the relevant public will perceive those word elements of the mark applied for as being ‘sk’ and ‘skintegra’.
70      In the present case, the Court agrees first of all with the Board of Appeal’s finding that the element ‘skintegra’ is the dominant element in the overall impression of the mark applied for. That word is centred in the figurative mark and slightly larger than the element ‘the rare molecule’ placed below it.
71      The figurative element in hexagonal form containing the element ‘sk’ is, as noted correctly by EUIPO, a banal geometrical figure, like a rectangle, circle or a pentagon, and known by the general public, even by consumers with only basic knowledge of geometry (see, to that effect, judgments of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 26, and of 3 December 2015, Compagnie des fromages & Richesmonts v OHIM – Grupo Lactalis Iberia (Representation of a red and white Vichy motif), T‑327/14, not published, EU:T:2015:929, paragraph 34 and the case-law cited), having a decorative nature and serving to introduce the element ‘skintegra’, directly understood by the relevant public as being a neologism.
The element ‘sk’ directly draws attention to the first two letters of the word element of the neologism ‘skintegra’ represented in the same font, size and stylisation. Accordingly, the relevant public will not pay attention to that element, which it will associate directly with the neologism ‘skintegra’, for which it will confer a particular meaning, as the Board of Appeal correctly stated in paragraph 46 of the contested decision. Therefore, the applicant is wrong to submit that the element ‘sk’ is dominant.
72      As for the element ‘the rare molecule’, it does not attract as much attention as the neologism ‘skintegra’. Written in slightly smaller characters, it will be perceived rather as an advertising slogan by persons who understand English or associate the English word ‘molecule’ with the German equivalent ‘Molekül’.
73      It is in the light of those considerations that it is necessary to examine whether the similarity between the signs at issue was correctly assessed in the contested decision and, if so, whether there was a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
–       The visual, phonetic and conceptual comparison
74      The Board of Appeal found that there was a visual similarity between the signs at issue, on account of the fact that the first eight of the 11 letters of the earlier German trade mark were reproduced in the same order in the dominant element ‘skintegra’ of the mark applied for, in a central position and of a substantial length. Given that, according to the case-law, consumers generally pay more attention to the beginnings of marks, the fact that the first part of the earlier German mark coincides with the first part of the most dominant part of the mark applied for is an indication of the similarity between the signs at issue. The Board of Appeal found that those parts of the signs at issue also coincided phonetically, with the result that there was an average degree of similarity between them in that regard. Furthermore, the letters ‘sk’ of the figurative element of the mark applied for and the expression ‘the rare molecule’ of that mark are not pronounced.
75      As to the conceptual comparison, the Board of Appeal found that the dominant element ‘skintegra’ of the mark applied for and the earlier German mark SKINTEGRITY had no meaning for German consumers, but that a non-negligible part of those consumers might understand the signs at issue as being, respectively, the contraction of ‘skin’ and ‘integra’ as well as ‘skin’ and ‘integrity’. Accordingly, the word ‘skin’ might be understood by some consumers as being the natural outer layer which covers a person, the skin, while the words ‘integrity’, of the earlier German mark, and ‘integra’, of the mark applied for, might be understood as evoking the concepts of ‘flawlessness, impeccability, incorruptibility’, taking into account their proximity to the German equivalent ‘Integrität’.
76      To that extent, the Board of Appeal found that the signs at issue were conceptually similar for a non-negligible part of the relevant public. A conceptual dissimilarity cannot be based on the expression ‘the rare molecule’, which is of secondary and descriptive importance for a part of the relevant public.
77      The applicant submits that there is no visual, phonetic or conceptual similarity between the signs at issue and that the Board of Appeal deviated from its previous decision-making practice. It argues that it is necessary to take into consideration the mark applied for as a whole and not only the element ‘skintegra’ and, consequently, that the mark applied for is visually longer than the earlier German mark. Phonetically, it submits that the mark applied for will be pronounced in its entirety, including, in addition to the term ‘skintegra’, the expression ‘the rare molecule’.
78      The applicant argues that the signs at issue are conceptually different because the mark applied for contains more word and figurative elements than the earlier mark.
79      EUIPO disputes the applicant’s arguments.
80      As regards the alleged deviation from previous decisions of EUIPO, that is not, as stated above, relevant to the assessment of the lawfulness of the contested decision and therefore the analysis of the similarity of the signs at issue.
81      As regards the visual comparison between the signs at issue, the earlier German mark and the word element of the mark applied for consist of nine and 11 letters respectively, coincide in their initial parts, corresponding to the element ‘skintegr’, and differ in their endings. It should also be noted that the letter ‘k’ and the letter ‘a’ in the element ‘skintegra’ are stylised in such a way that they may be perceived by the relevant public as constituting a difference between the signs at issue.
82      As noted in paragraph 70 above, the element ‘skintegra’ dominates the overall impression created by the mark applied for and the element ‘skin’, although descriptive, must be taken into account in the analysis of the similarity of the signs.
83      It must therefore be concluded that, on the basis of an overall impression, the signs at issue must be found to be visually similar, as the Board of Appeal found in paragraph 49 of the contested decision.
84      From a phonetic standpoint, the Board of Appeal was correct in finding that the relevant public would not pronounce the expression ‘the rare molecule’, due to the secondary position of that element and its laudatory nature.
85      Therefore, the signs at issue are phonetically similar, on account of the presence of the first part ‘skintegr’, common to both neologisms. Nevertheless, they differ in their following characters, respectively, ‘a’ and ‘ity’, as well as their number of syllables and their sound pattern.
86      The earlier German mark is pronounced in four syllables, ‘skin’, ‘te’, ‘gri’, ‘ty’, whereas the mark applied for is pronounced in three syllables, ‘skin’ ‘te’ and ‘gra’.
87      It follows that the signs at issue are phonetically similar, as the Board of Appeal correctly found.
88      Conceptually, as the Board of Appeal correctly pointed out and was not disputed by the parties, a non-negligible part of the relevant public may understand the signs at issue as being, respectively, the contraction of the words ‘skin’ and ‘integrity’, on the one hand, and the words ‘skin’ and ‘integra’, on the other.
89      Notwithstanding the Board of Appeal’s assessments on this point, the term ‘skin’ is part of basic English vocabulary (see, to that effect, judgment of 28 October 2009, X-Technology
R & D Swiss v OHIM – Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 39) and refers directly to the goods at issue.
90      In that regard, the term ‘skin’ is likely to be understood by a large part of the general public, even non-English-speaking, including the relevant German public, as referring to the skin, particularly in view of the nature of the goods at issue, which are body and skin care products.
91      As regards the elements ‘integrity’ and ‘integra’, they will be understood by a part of the relevant public, taking account of their proximity to the German equivalent ‘integrität’, as referring to the concept of ‘flawlessness, impeccability, incorruptibility’.
92      It follows that the words ‘skintegra’ and ‘skintegrity’, although not having the same meanings, may refer to a similar concept, namely the integrity of the skin, with regard to the goods at issue.
93      As for the laudatory expression ‘the rare molecule’, the Court considers that its secondary nature in the sign applied for cannot serve as the basis for a conceptual difference.
94      Accordingly, the Board of Appeal was correct in finding that there was a conceptual similarity between the signs at issue for a non-negligible part of the relevant public.
The likelihood of confusion
95      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).
96      The Board of Appeal found that, bearing all the relevant factors in mind, namely the similarity of the goods at issue, the similarity of the signs at issue and the lack of relevance of the relevant public’s high level of attention, there was a likelihood of confusion for the average consumer in Germany who only rarely has a chance to compare the various marks directly, but must place his or her trust in the imperfect picture of them that he or she has kept in mind.
97      The applicant disputes the existence of a likelihood of confusion on account of the lack of similarity between the signs at issue and between the goods at issue and the high level of attention of the relevant public.
98      As the Court found, the goods at issue are similar, the signs at issue are visually and phonetically similar and the differences between the endings ‘a’ and ‘ity’ of those signs do not offset the similarities found. The same is true of the hexagonal figurative element and the element ‘the rare molecule’, which has been found to be weakly distinctive and negligible in the overall impression created by the mark applied for. Accordingly, the signs at issue are conceptually similar for a non-negligible part of the relevant public.
99      Furthermore, the earlier German mark has a normal degree of inherent distinctiveness. That mark is composed of the descriptive term ‘skin’ and the word ‘integrity’ joined together. The latter term cannot be regarded as forming part of basic English vocabulary for a non-negligible part of the relevant public, unlike the word ‘skin’. Accordingly, the distinctiveness of the earlier German mark has no bearing on the global assessment of the likelihood of confusion.
100    Consequently, it must be held that, following a global assessment, the Board of Appeal was right in finding that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the part of the relevant public. The plea alleging that there is no likelihood of confusion must therefore be rejected.
101    In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
102    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Creaticon d.o.o. to pay the costs.
Spielmann
Öberg
Mastroianni
Delivered in open court in Luxembourg on 11 May 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.