JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 June 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark BIOVÈNE BARCELONA – Earlier EU word mark BIORENE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑227/20,
Biovene Cosmetics, SL, established in Barcelona (Spain), represented by E. Estella Garbayo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini 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
Eugène Perma France, established in Saint-Denis (France), represented by S. Havard Duclos, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 12 February 2020 (Case R 1661/2019-4), relating to opposition proceedings between Eugène Perma France and Biovene Cosmetics,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, G. De Baere (Rapporteur) and G. Steinfatt, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 24 April 2020,
having regard to the response of EUIPO lodged at the Court Registry on 24 August 2020,
having regard to the response of the intervener lodged at the Court Registry on 1 September 2020,
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        On 29 March 2017, the applicant, Biovene Cosmetics, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in 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: ‘Cosmetics’.
4        The EU trade mark application was published in European Union Trade Marks Bulletin
No 2017/088 of 12 May 2017.
5        On 8 August 2017, the intervener, Eugène Perma France, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the EU word mark BIORENE, which was filed on 29 June 2000 and registered on 30 July 2001 under the number 1739226 and covers goods in Class 3 of the Nice Agreement corresponding to the following description: ‘Soaps; soap products; perfumery, cosmetic creams, perfume, perfume extracts, eau de Cologne, essential oils, cosmetics, make-up and make-up removing preparations, nail varnish, depilatory preparations; hair lotions; hair creams, hair gels, hair lacquers, hair mousse; preparations for setting and waving hair, shampoo, brilliantines, hair fixing preparations, hair dyes, preparations for permanent waves and their neutralisers; preparations for straightening hair and their neutralisers; preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes, bleaching and lightening preparations for the hair; hair colours’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 27 April 2018, the applicant requested, in accordance with Article 47(2) and (3) of Regulation 2017/1001, that the intervener furnish proof of genuine use of the earlier mark in connection with the goods in respect of which it was registered and on which the opposition was based.
9        On 17 July 2018, the intervener provided various documents for the purposes of proving genuine use of the earlier mark.
10      By decision of 29 May 2019, the Opposition Division upheld the opposition in its entirety and rejected the application for registration on the ground that there was a likelihood of confusion.
11      On 29 July 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Opposition Division.
12      By decision of 12 February 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
13      In the first place, the Board of Appeal found that the applicant had explicitly accepted the outcome of the Opposition Division’s decision regarding proof of use in relation to ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3. Consequently, it concluded that the assessment of the proof of use was not part of the scope of the appeal and that that issue did not have to be re-examined.
14      In the second place, the Board of Appeal found that the relevant territory was the whole of the European Union. Furthermore, since the sign applied for included the letter ‘e’ with a grave accent, such as is used in French, it stated that it was the perception of the French-speaking part of the public which had to be analysed.
15      In the third place, the Board of Appeal pointed out that the goods ‘cosmetics’ covered by the mark applied for included, as a broader category, the ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3 covered by the earlier mark. It therefore concluded that the goods were identical.
16      In the fourth place, the Board of Appeal found that the signs at issue were visually and phonetically similar to an average degree. It took the view that, from a conceptual standpoint, the signs at issue had no meaning and that it was not therefore possible to carry out a conceptual comparison.
17      In the fifth place, it found that relevant consumers’ level of attention with regard to goods in Class 3 was generally average, even though consumers could prove to be more attentive when acquiring body care products.
18      The Board of Appeal concluded that, taking into account the average degree of visual and phonetic similarity between the signs at issue as well as the identity of the goods in question and the normal inherent distinctiveness of the earlier mark, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 with regard to all the goods covered by the mark applied for, even if a higher level of attention on the part of the relevant public with regard to the goods in Class 3 were taken into consideration.
Forms of order sought
19      The applicant claims that the Court should:
–        annul and invalidate the contested decision;
–        annul and invalidate the Opposition Division’s decision;
–        alter the Opposition Division’s decision and the contested decision and allow the application for the EU trade mark in its entirety;
–        order EUIPO and the intervener to pay the costs of the present proceedings and the costs incurred before EUIPO.
20      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
21      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
22      Furthermore, it must be pointed out that, ratione temporis, the applicable substantive provisions in the present case are those of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21). According to the case-law of the Court of Justice, it is the substantive law in force on the filing date of the application for registration of the mark against which opposition proceedings are brought that continues to apply (see, to that effect, judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 2). Since the applicant applied for registration of the mark at issue on 29 March 2017, it is necessary, in the present case, to rely on Regulation No 207/2009.
Preliminary issue regarding the scope of the action
23      In the application, the applicant puts forward arguments in order to call into question the Opposition Division’s assessment of the evidence of use. Accordingly, it submits that the evidence of use submitted by the intervener in the course of the opposition proceedings does not contain sufficient indications concerning the time and extent of use of the mark BIORENE. Furthermore, that evidence does not, according to the applicant, refer to any date of creation or publication.
24      The intervener disputes the merits of those claims and submits that the applicant’s arguments are irrelevant, in particular because the applicant had agreed with the Opposition Division’s assessment regarding genuine use of the earlier mark in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3.
25      EUIPO submits that the applicant’s arguments calling into question the assessment of the proof of use carried out by the Opposition Division are inadmissible and do not form part of the subject matter of the present proceedings.
26      It must be pointed out that Article 188 of the Rules of Procedure of the General Court provides that the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal.
27      According to settled case-law, the purpose of an action brought before the Court pursuant to Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, pursuant to Article 95 thereof, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see order of 8 March 2019, Herrero Torres v EUIPO – DZ Licores (CARAJILLO LICOR 43 CUARENTA Y TRES), T‑326/18, not published, EU:T:2019:149, paragraph 34, and judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 120).
28      As regards the legal context, it must be observed that, in proceedings relating to relative grounds for refusal, the actual wording of Article 95(1) of Regulation 2017/1001 provides that EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when ruling on an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal relied on by the party concerned and the related facts and evidence presented by the parties (judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 41; see also, order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 35).
29      The parties, in proceedings before the Court, do not therefore have the power to alter the legal context of the dispute, as set out in the claims and contentions which they had put forward during the proceedings before the Board of Appeal (order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 36).
30      In that regard, it must be pointed out that, in the contested decision, the Board of Appeal did not review the merits of the Opposition Division’s assessment regarding the proof of genuine use of the earlier mark, finding that that assessment was not part of the scope of the appeal before it.
31      The Board of Appeal was right in finding that, in its statement of grounds for the appeal, the applicant had agreed with the Opposition Division’s assessment regarding genuine use of the earlier mark in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ in Class 3.
32      Furthermore, it must be stated that the applicant does not dispute that finding on the part of the Board of Appeal before the Court. The applicant submitted in the application that the evidence of use provided ‘refer[red] only to the use [of] the mark “BIORENE” relating to “[p]reparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes”’ and that ‘relating to the rest of the goods in class [3] of the … mark “BIORENE”’ the intervener had not therefore ‘file[d] any evidence of use’.
33      The applicant’s arguments seeking to call into question the evidence of use of the earlier mark must therefore be rejected as ineffective. Since it had been accepted that there had been genuine use in connection with ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’, the Board of Appeal was entitled to restrict its assessment of the likelihood of confusion to those goods alone. Consequently, the question of whether there was genuine use in connection with the other goods is irrelevant.
The issue of the admissibility of a document submitted for the first time before the Court
34      The intervener contends that Annex A 7 to the application must be rejected as inadmissible because it was submitted for the first time before the Court.
35      In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 4 October 2018, Frinsa del Noroeste v EUIPO – Alimentos Friorizados (Alfrisa), T‑820/17, not published, EU:T:2018:647, paragraph 59 and the case-law cited; judgment of 25 November 2020, Brasserie St Avold v EUIPO (Shape of a dark bottle), T‑862/19, EU:T:2020:561, paragraph 14).
36      As regards Annex A 7 to the application, which contains documents that are intended to show that the goods covered by the mark applied for are aimed at a specific type of user, it is sufficient to state they are documents which have been submitted for first time before the Court, with the result that they must be declared inadmissible.
The single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
37      The applicant submits, in essence, that there are no visual, phonetic and conceptual similarities between the marks at issue that are sufficient to establish that there is a likelihood of confusion. It also complains that the Board of Appeal erred when comparing the goods, analysing the distinctive and dominant elements of the marks at issue and carrying out the global assessment of the likelihood of confusion between those marks.
38      EUIPO and the intervener dispute those arguments.
39      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.
40      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 the same 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; judgments of 4 October 2018, Alfrisa, T‑820/17, not published, EU:T:2018:647, paragraph 27, and of 25 November 2020, BRF Singapore Foods v EUIPO – Tipiak (Sadia), T‑309/19, not published, EU:T:2020:565, paragraph 53).
41      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 (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47; of 4 October 2018, Alfrisa, T‑820/17, not published, EU:T:2018:647, paragraph 28, and of 25 November 2020, Kisscolor Living v EUIPO – Teoxane (KISS COLOR), T‑802/19, not published, EU:T:2020:568, paragraph 24).
42      It must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s assessment that the relevant public consists of the French-speaking general public in the European Union, the level of attention of which is generally average, but could prove to be higher with regard to body care products.
The comparison of the goods
43      The applicant disputes the Board of Appeal’s assessment regarding the comparison of the goods covered by the signs at issue.
44      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 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; judgments of 28 November 2019, Soundio v EUIPO – Telefónica Germany (Vibble), T‑665/18, not published, EU:T:2019:825, paragraph 27, and of 25 November 2020, Sadia, T‑309/19, not published, EU:T:2020:565, paragraph 61).
45      As regards the comparison of the goods at issue, the Board of Appeal found that the goods covered by the mark applied for were ‘cosmetics’ and the goods covered by the earlier mark were ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’. It pointed out that, since the applicant had not filed any request for restriction of the list of goods in the course of the proceedings, the assessment of the goods covered by the mark applied for had to be based on ‘cosmetics’ and not on ‘cosmetics other than for beauty and hair care’, as had been unilaterally declared by the applicant.
46      Furthermore, the Board of Appeal pointed out that the particular circumstances in which the goods covered by the marks were actually marketed did not, as a matter of principle, have any impact on the assessment of the likelihood of confusion because they could vary over time depending on the wishes of the proprietors of the trade marks.
47      Lastly, the Board of Appeal stated that the term ‘cosmetic’ was defined according to the Oxford English Dictionary as ‘a preparation intended to beautify the hair, skin or complexion’ and deduced from this that that term also included preparations for hair care. It therefore concluded that the goods at issue had to be considered to be identical since the broader category of ‘cosmetics’ included ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’.
48      The applicant submits that the goods covered by the mark applied for must be categorised as ‘cosmetics other than for beauty and hair care’ and not as ‘cosmetics’. Furthermore, it argues that the Board of Appeal erred in finding that the goods covered by the mark applied for were identical to the goods covered by the earlier mark. According to the applicant, even though the goods are ‘cosmetics’, they differ in their nature and purpose, since the goods covered by the mark applied for are cosmetics for the skin, whereas those covered by the earlier mark are only products for the hair and scalp. Furthermore, it submits that the substances used are not the same and that they are not applied in the same way and with the same frequency. Lastly, it claims that the goods are aimed at different generations of consumers with very different needs. The applicant concludes that the goods at issue are similar only to a very low degree.
49      First, it must be pointed out that, in order to assess whether the goods at issue are similar for the purposes of Article 8(1)(b) of Regulation 2017/1001, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed under those marks (judgment of 16 June 2010, Kureha v OHIM – Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71; order of 8 March 2019, CARAJILLO LICOR 43 CUARENTA Y TRES, T‑326/18, not published, EU:T:2019:149, paragraph 59, and judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 40).
50      In the present case, it is sufficient to state that the applicant did not, in the course of the proceedings before EUIPO, file a request for restriction of the list of goods referred to in its application for registration. Consequently, the Board of Appeal was right in carrying out the comparison of the goods by taking into account the ‘cosmetics’ referred to in the application for registration and not only ‘cosmetics other than for beauty and hair care’ as the applicant submits.
51      It is clear that the applicant’s arguments that the goods at issue differ in their nature, their purpose and the substances used and meet different needs are based on the incorrect premiss that the mark applied for covers only ‘cosmetics other than for beauty and hair care’. Those arguments must therefore be rejected.
52      It follows that the applicant cannot criticise the Board of Appeal for having, with regard to the comparison of the goods at issue, taken into account, in paragraphs 23 to 28 of the contested decision, the list of goods as it appeared in the application for registration of the mark applied for.
53      Secondly, it must be pointed out that goods can be regarded as identical where the goods covered by the earlier mark are included in a more general category covered by the trade mark application (judgments of 23 October 2002, Institut für Lernsysteme v OHIM – Educational Services (ELS), T‑388/00, EU:T:2002:260, paragraph 53, and of 25 November 2020, Sadia, T‑309/19, not published, EU:T:2020:565, paragraph 139).
54      In the present case, the ‘preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes’ covered by the earlier mark fall within the broader category of ‘cosmetics’ covered by the mark applied for.
55      Consequently, it must be held that the Board of Appeal was right in finding that the goods at issue were identical.
The distinctive and dominant elements of the signs
56      The applicant submits that the distinctive and dominant elements of the marks at issue are ‘biovène’ with regard to the mark applied for and ‘biorene’ with regard to the earlier mark. It then confines itself to stating that those elements create overall impressions that are different from a visual, phonetic and conceptual standpoint.
57      According to the Board of Appeal, the earlier mark as a whole has a normal distinctive character. It found that the element ‘barcelona’ in the sign applied for would immediately be associated by the relevant public with the Spanish city. It thus found that that element was non-distinctive since it indicated a geographical location in which the goods were produced or the company had its seat.
58      In the present case, it must be stated that the applicant does not put forward any valid argument seeking to dispute the Board of Appeal’s assessment regarding the determination of the distinctive and dominant elements of the signs at issue.
The comparison of the signs
59      The applicant disputes the Board of Appeal’s assessment regarding the visual, phonetic and conceptual comparison of the signs at issue.
60      According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited; judgments of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 41, and of 23 September 2020, Brillux v EUIPO – Synthesa Chemie (Freude an Farbe), T‑401/19, not published, EU:T:2020:427, paragraph 34).
61      In the first place, from a visual standpoint, the Board of Appeal pointed out that the signs had in common the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’, which were present identically in both signs, and that they differed only in the letters ‘r’ and ‘v’ and in the grave accent on the ‘e’ of the mark applied for. However, it stated that those differences had only a slight visual impact, particularly because they were in the middle of the sign. It pointed out that consumers generally pay greater attention to the beginning of a mark than to its ending.
62      The Board of Appeal also observed that the signs differed in the additional word ‘barcelona’ in the sign applied for and in a merely decorative line which preceded and followed that word. It stated that, since the word ‘barcelona’ was written in markedly smaller letters than the term ‘biovène’, it would hardly be perceived by the relevant public and consequently had to be regarded as negligible.
63      Furthermore, it found that the stylisation of the sign applied for had to be regarded as rather simple and as fulfilling a purely decorative function. It stated that it was not such as to divert the relevant public’s attention away from the word elements.
64      The applicant submits that the mark applied for is a figurative mark consisting of word and graphic elements, whereas the earlier mark is a word mark. According to the applicant, the mark applied for can therefore be seen and heard, whereas the earlier mark can only be heard. Furthermore, it submits that the mark applied for consists of the words ‘biovène’ and ‘barcelona’ written in upper-case letters in a special font and placed on two parallel horizontal planes. It concludes that the marks are perfectly differentiated from each other from a visual point of view.
65      In this connection, it is sufficient to state, regarding the mark applied for, that, although it is a figurative mark, it consists primarily of word elements. Furthermore, those word elements are very similar to the word element in the earlier mark, because they have the letters ‘b’, ‘i’, ‘o’, ‘e’ and ‘n’ in common and differ only in their central letters, the accent on the first ‘e’ and the second word element, ‘barcelona’. Those differences have only a slight visual impact.
66      That is particularly true because the public is likely to associate the element ‘barcelona’ with the Spanish city, and it will be perceived as an indication of either the geographical location in which the goods are produced or the geographical location in which the company has its seat. Furthermore, since that element is written in much smaller letters than the word element ‘biovène’, it will hardly be perceived by the relevant public.
67      The figurative elements of the mark applied for are rather simple. The line which precedes and follows the word ‘barcelona’ is purely decorative and serves only to frame that word, and the typography used is rather simple and is not really novel. Furthermore, the mark applied for does not contain any other particularly striking figurative element.
68      In addition, it is important to bear in mind that the earlier mark is a word mark. The proprietor of that mark could therefore use different graphic representations for it (see, to that effect, judgment of 14 April 2010, Laboratorios Byly v OHIM – Ginis (BILLY’S Products), T‑514/08, not published, EU:T:2010:143, paragraph 34). Consequently, the figurative elements of the figurative mark applied for, which have been referred to in paragraph 67 above, are, in the context of the assessment of the likelihood of confusion between the signs at issue, of only secondary importance as compared with the word element of the earlier mark. In the same vein, given the essentially ornamental function of the figurative elements in the figurative mark applied for, the fact that those elements are not reproduced in the earlier mark is not sufficient to rule out any visual similarity between the signs at issue (see, to that effect, judgment of 27 September 2018, Sevenfriday v EUIPO – Seven (SEVENFRIDAY), T‑449/17, not published, EU:T:2018:612, paragraph 41 and the case-law cited).
69      Consequently, the Board of Appeal was right in finding that the differences between the signs are not sufficient to call into question the visual similarity resulting from the elements ‘biovène’ and ‘biorene’.
70      In the second place, from a phonetic standpoint, the Board of Appeal found that the pronunciation of the signs at issue coincided in the sense that they had the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’ in common and found that the relevant French-speaking public would pronounce them in a similar way. According to the Board of Appeal, the difference in sound produced by the fourth letter in each of the signs, ‘r’ and ‘v’ respectively, was mitigated by the position of those letters in the middle of the signs. Furthermore, it found that the element ‘barcelona’ in the sign applied for was likely not to be pronounced because of its small size and its lower position in the sign.
71      Consequently, the Board of Appeal concluded that the signs at issue were phonetically similar to an average degree.
72      According to the applicant, the signs differ phonetically in a number of respects. First, the final parts of the signs at issue are totally different. Secondly, the sign applied for includes the labial consonant ‘v’, whereas the earlier mark includes the lingual consonant ‘r’. Thirdly, the mark applied for contains two separate words, whereas the earlier mark comprises only one word. Fourthly, the mark applied for has 16 letters, whereas the earlier mark has only 7 letters. Fifthly, according to the applicant, the mark applied for consists of six syllables, whereas the earlier mark consists of only three syllables. Consequently, the applicant submits that the pronunciation of the marks at issue is completely different. It argues that, since the word element ‘biovène’ in the mark applied for is a French word, the final vowel, ‘e’, in that word is not pronounced.
73      In that regard, it must be pointed out that most of the applicant’s arguments are based on the idea that the word element ‘barcelona’ will be pronounced, whereas it has been established, first, that the public will associate it directly with the Spanish city and that it will therefore be perceived as a geographical location and, secondly, that, on account of its lower position and its small size, it will probably not be pronounced. Moreover, the applicant admits that the elements ‘biovène’ and ‘biorene’ are dominant and does not call into question the Board of Appeal’s assessment that the element ‘barcelona’ is non-distinctive.
74      As regards the applicant’s argument that the element ‘biovène’ is a French word in which the vowel ‘e’ will not be pronounced, the answer must be that the applicant does not state the reason why the same rules of pronunciation could not apply to both of the signs at issue.
75      Consequently, the fact that the signs differ in that the earlier mark contains the letter ‘r’, whereas the mark applied for contains the letter ‘v’, does not call into question the similarity of the signs resulting from the presence of the same letters, ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’. The fact that the mark applied for contains the letter ‘e’ with a grave accent does not give rise to any difference in pronunciation for the French public.
76      As regards, lastly, decision B 731 853 of the Opposition Division (Case TANA/TANIT) of 27 June 2006, which the applicant relies on in support of its argument that the pronunciation of the marks at issue produces a completely different sound, it must be pointed out that, according to the case-law, decisions concerning the registration of a sign as an EU trade mark which are taken by the Boards of Appeal pursuant to Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion, with the result that the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union. Consequently, the Boards of Appeal cannot be bound by the previous decisions of EUIPO (see judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart), T‑123/18, EU:T:2019:95, paragraph 36 and the case-law cited; judgment of 19 December 2019, Nosio v EUIPO (BIANCOFINO), T‑54/19, not published, EU:T:2019:893, paragraph 51, and order of 15 October 2020, Lotto24 v EUIPO (LOTTO24), T‑38/20, not published, EU:T:2020:496, paragraph 33). Furthermore, the TANA/TANIT case is irrelevant with regard to the outcome of the present proceedings because it concerned marks which are completely different from those at issue in the present case.
77      Consequently, the Board of Appeal was right in finding that the signs at issue were phonetically similar to an average degree.
78      Lastly and in the third place, from a conceptual standpoint, the Board of Appeal found that neither the word element ‘biovène’ in the sign applied for nor the word element ‘biorene’ in the earlier mark conveyed any concept for the relevant public. As regards the word element ‘barcelona’ in the sign applied for, it took the view that that element would be perceived as an indication of origin and would hardly be perceptible because of its small size and its position within the sign. The Board of Appeal concluded that, in such a case, a conceptual comparison of the signs was not possible and could not therefore have an influence on the similarity of those signs.
79      The applicant submits that the signs at issue are very dissimilar from a conceptual standpoint. It states that the elements ‘biovène’ and ‘biorene’ in the marks at issue do not have any meaning and that they evoke an abstract idea in the mind of the consumer. It submits that the mark applied for, however, includes the geographical name ‘barcelona’, which constitutes a clear indication of industrial origin and therefore evokes a concrete idea in the mind of the public.
80      As regards the conceptual similarity between the signs, it must be stated that, even though the prefix ‘bio’ in the signs at issue is likely to be understood by the whole of the public as an abbreviation of the words ‘biological’ or ‘biology’, that conceptual content cannot suffice to confer a clear and specific meaning on those signs.
81      The applicant does not dispute the finding that the elements ‘biovène’ and ‘biorene’ do not have any meaning. Furthermore, the fact that the element ‘barcelona’ designates the Spanish city is not sufficient to confer a meaning on the mark applied for as a whole, particularly because that element will be perceived solely as a geographical origin.
82      Since the relevant public will not attribute any specific meaning to the two signs, it must be held, as the Board of Appeal found in paragraph 48 of the contested decision, that a conceptual comparison is not possible (see, to that effect, judgments of 22 May 2012, Retractable Technologies v OHIM – Abbott Laboratories (RT), T‑371/09, not published, EU:T:2012:244, paragraph 41; of 13 May 2015, Ferring v OHIM – Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 69, and of 8 July 2020, FF Group Romania v EUIPO – KiK Textilien und Non-Food (‚kix), T‑659/19, not published, EU:T:2020:328, paragraph 84).
83      In the light of the preceding paragraphs, the Board of Appeal did not err in finding that the signs at issue were visually and phonetically similar and that a conceptual comparison between those signs was not possible.
The global assessment of the likelihood of confusion
84      The applicant submits that the marks at issue are completely different visually, phonetically and conceptually and cannot in any way be subject to a likelihood of confusion. Furthermore, it argues that the distinctive and dominant elements of the two marks at issue are different. Lastly, it submits that the consumer’s level of knowledge of the marks is a crucial element in assessing the likelihood of confusion. In this respect, the applicant takes the view that social networks play an important role. It argues that the fact that the mark applied for has an Instagram account which has more than 412 000 subscribers indicates a high level of knowledge of that mark on the market. According to the applicant, it follows that the overall impressions created by the signs at issue are very different and that that is sufficient to rule out any likelihood of confusion.
85      According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17; of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 56; and of 23 September 2020, Freude an Farbe, T‑401/19, not published, EU:T:2020:427, paragraph 68).
86      It must be pointed out that the Board of Appeal carried out a global assessment of the relevant factors. It found that, in view of the identity of the goods at issue, the visual and phonetic similarities between the signs and the normal inherent distinctiveness of the earlier mark, the differences between the signs at issue were not sufficient to rule out any likelihood of confusion on the part of the general public, even considering that that public might display a higher level of attention.
87      As regards the applicant’s argument that the consumer’s level of knowledge of the marks is a crucial element in assessing the likelihood of confusion, it must be pointed out that, even though the level of knowledge of the marks at issue may play a certain role in the context of the assessment of the likelihood of confusion, that assessment also depends on numerous other factors, like the degree of similarity between the marks at issue and between the goods or services covered. The applicant’s conclusion that there is no likelihood of confusion between the signs at issue is based mainly on the lack of similarity of the goods and of the signs at issue. However, as has been held in paragraphs 55 and 83 of the present judgment, the Board of Appeal was right in finding that the goods at issue were identical and the signs at issue were similar.
88      For the sake of completeness, it must be pointed out that, since the particular circumstances in which the goods and services at issue are marketed may vary over time depending on the wishes of the proprietors of the marks at issue, it is inappropriate to take those circumstances into account for the purpose of analysing whether there will be a likelihood of confusion between those marks (see, to that effect, judgment of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59). Consequently, the Board of Appeal was right in rejecting, in paragraph 26 of the contested decision, the arguments of the applicant which were essentially based on a comparison of the marketing strategies which it and the intervener adopted in order to market their goods.
89      The applicant has not therefore put forward any argument which is capable of calling into question the Board of Appeal’s reasoning regarding the global assessment of the likelihood of confusion and consequently the single plea must be rejected.
90      In view of all of the foregoing, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second and third heads of claim.
Costs
91      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Biovene Cosmetics, SL to pay the costs.
Collins
De Baere
Steinfatt
Delivered in open court in Luxembourg on 30 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.