JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
23 May 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark AQUAPRINT — Earlier national word marks AQUACEM and national unregistered marks AQUACEM and AQUASIL — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Use in the course of trade of a sign of more than mere local significance — Article 8(4) of Regulation 2017/1001 — Action for passing off — No misrepresentation)
In Case T‑312/18,
Dentsply De Trey GmbH, established in Konstanz (Germany), represented by S. Clark, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by G. Sakalaite-Orlovskiene, J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being
IDS SpA, established in Savone (Italy), represented by M. Andreolini and F. Andreolini, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 26 February 2018 (Case R 1438/2017-2), relating to opposition proceedings between Dentsply De Trey and IDS,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 14 May 2018,
having regard to the response of EUIPO lodged at the Court Registry on 31 July 2018,
having regard to the response of the intervener lodged at the Court Registry on 6 September 2018,
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 31 October 2013, the intervener, IDS SpA, 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        The mark in respect of which registration was sought is the word sign AQUAPRINT.
3        The goods in respect of which registration was applied for are in Classes 1, 5 and 10 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 1:       ‘Laboratory alginates for dental technology purposes; Silicones for dental implants’;
–        Class 5:       ‘Chemical materials for dental impressions; Resins, cements, dental chalk, laboratory silicones and alginates and liquids for use in dental technology, orthodontics and dentistry; Sterilising and disinfecting liquids for use in dentistry and dental technology; Moulding wax for dentists’;
–        Class 10:       ‘Impression holders of metal, for dental impressions; Syringes for injections of preparations for use in dentistry and dental technology and for orthodontics; Electric medical devices; Apparatus and handling equipment for dental cleaning; Orthodontic appliances, orthodontic attachments, orthodontic machines and instruments, orthodontic wire and orthodontic elastomers’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 2013/237 of 13 December 2013.
5        On 13 March 2014, the applicant, Dentsply De Trey GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier rights:
–        the German word mark AQUACEM, registered on 1 February 1989 under No 1 141 674 for ‘chemical products for dentistry and/or dental technology, dental materials’, in Class 5, and ‘dental and dental apparatus and instruments, artificial teeth, crowns, bridges, dentures’, in Class 10;
–        the Danish word mark AQUACEM, registered on 13 November 1992 under No 103 701 992 and the Irish word mark AQUACEM, registered 7 November 1988 under No 128 740, in respect of the goods in Class 5 corresponding to the description ‘Dental cement’;
–        the United Kingdom word mark AQUACEM, registered on 18 November 1988 under No 1 363 906 in respect of the goods in Class 5 corresponding to the description ‘Preparations and substances for dental use; dental and bone cements; all included in Class 5’;
–        the international word mark AQUACEM designating Austria, Belgium, Germany, Spain, France, Italy, Luxembourg, the Netherlands and Portugal, registered on 31 July 1989 under No 541 535 in respect of ‘Chemical products for dental and/or dental technology, dental materials’ in Class 5, and ‘Instruments and devices for dental and/or dental technology, artificial teeth, crowns, bridges, dentures’ in Class 10;
–        the non-registered marks AQACEM and AQUASIL, used in the course of trade in several Member States and in particular in the United Kingdom in respect of ‘chemicals, preparations and substances for dental use; dental and bone cements’ in Class 5 and ‘apparatus and instruments for dental use; artificial teeth’ in Class 10.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b),(4) and (5) of Regulation No 207/2009 (now Article 8(1)(b),(4) and (5) of Regulation 2017/1001).
8        On 5 May 2017, the Opposition Division rejected the opposition.
9        On 3 July 2017, the applicant filed a notice of appeal at EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10      By decision of 26 February 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
11      In the first place, the Board of Appeal considered that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the mark applied for and the earlier rights AQUACEM.
12      In that regard, firstly, concerning the comparison of the signs, the Board of Appeal held that the element ‘aqua’ of the signs at issue had only a weak distinctive character due to the fact that it alluded to at least one characteristic of the goods at issue, namely their suitability to function in a wet environment, whether that be the mouth of a patient, or a clinical or laboratory environment where contact with water is to be expected. The element ‘print’ of the mark applied for is not highly distinctive in respect of those goods at issue which are used in the context of dental impressions. Moreover, the Board of Appeal held that the idea that the element ‘cem’ of the earlier rights could be perceived as an abbreviation of the word ‘cement’ was not substantiated by any evidence, and that it was therefore unlikely that that element would suggest any characteristic of the goods. Next, the Board of Appeal considered that the signs at issue were only slightly similar visually and phonetically and that they were conceptually different. According to the Board of Appeal, the low degree of visual and phonetic similarity was due to the weak distinctive character of the common element ‘aqua’ and to the complete visual and phonetic dissimilarity of the elements ‘print’ and ‘cem’. Conceptually, the Board of Appeal held that the word ‘aquaprint’, taken as a whole, evoked the idea of a picture, design or composition made out of water, or even a ‘watercolour’ or ‘aquarelle’, whereas the word ‘aquacem’ had no meaning, so that according to it the signs at issue were conceptually different.
13      Secondly, as regards the overall assessment of likelihood of confusion, the Board of Appeal held that, despite the partial identity of the goods covered by the marks at issue, there was no risk that the relevant public might believe that those goods come from the same undertaking or economically linked undertakings. In that regard, it held that the low degree of visual and phonetic similarity was to a large extent offset by the conceptual differences. The Board of Appeal also noted that the consumers of the goods in question were specialists in the field of dentistry and displayed a relatively high level of attention during the purchase of those goods, which would reduce the likelihood of confusion. Moreover, the Board of Appeal held that the evidence submitted by the applicant was not sufficient to establish that the earlier marks enjoyed an enhanced distinctive character. In addition, the Board of Appeal noted that the element ‘aqua’, with a low distinctive character, was the only common element belonging to the marks at issue. Those marks moreover do not exhibit the same semantic structure in light of the fact that the earlier marks combine the word ‘aqua’ with the meaningless word ‘cem’, whereas the trade mark applied for is composed of the word ‘aqua’ and the word ‘print’ which have a clear meaning.
14      In the second place, as regards the application of Article 8(4) of Regulation 2017/1001, the Board of Appeal held that one of the conditions set by the United Kingdom law on passing off, namely the condition relating to misrepresentation, was not satisfied in this case. Firstly, as regards the trade mark applied for and the unregistered earlier mark AQUACEM, the Board of Appeal referred to its observations relating to the lack of a likelihood of confusion between the marks AQUAPRINT and AQUACEM for the purposes of Article 8(1)(b) of Regulation 2017/1001. In the light of those findings, it is not possible to make a finding of misrepresentation in this case. Secondly, as regards the trade mark applied for and the unregistered mark AQUASIL, the Board of Appeal held that the visual and phonetic similarities due to the identity of the element ‘aqua’, with weak distinctive character, were not sufficient in order to find misrepresentation. According to the Board of Appeal, the observations relating to the lack of a likelihood of confusion between the marks AQUAPRINT and AQUACEM applied mutatis mutandis in this case. Thirdly, the Board of Appeal noted that the lack of misrepresentation resulted in the dismissal of the action for passing off since, according to the applicable national law, the three conditions of ‘goodwill’, misrepresentation and damage are cumulative.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs;
–        amend the contested decision, also with regard to the order for costs, and request EUIPO to order the intervener to pay the costs incurred before the Board of Appeal and the Opposition Division.
16      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
17      The intervener contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs;
–        confirm the amount of costs which the applicant was ordered to pay by the Opposition Division and by the Board of Appeal, namely EUR 300 and EUR 550 respectively.
Law
18      In support of its application, the applicant relies on two pleas in law, alleging, respectively, infringement of Article 8(1)(b) of Regulation 2017/1001 and infringement of Article 8(4) thereof.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
19      The applicant complains that the Board of Appeal committed errors in the context of the assessment of the similarity between the trade mark applied for and the earlier marks AQUACEM and in the context of the global assessment of the likelihood of confusion in the present case. Firstly, it claims that the Board of Appeal disregarded the distinctive and dominant elements of the signs being compared. Secondly, the applicant contests the Board of Appeal’s finding that the signs at issue are visually and phonetically similar only to a low degree and conceptually different. According to the applicant, they have a high degree of visual similarity and have at least an average degree of phonetic and conceptual similarity. Thirdly, the applicant claims that there is a likelihood of confusion between the marks at issue, in particular due to the partial identity of the goods covered by those marks and to the degree of similarity that the signs have. According to the applicant, there is a likelihood of confusion even where the element ‘aqua’ has only weak distinctive character.
20      EUIPO and the intervener dispute the applicant’s arguments.
21      Under Article 8(1)(b) of Regulation 2017/1001, 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
22      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and take account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
23      First of all, it is appropriate to confirm the definition used by the Board of Appeal of the relevant public and its degree of attention, as well as the comparison made by that board of the goods covered by the marks at issue, namely the trade mark applied for AQUAPRINT and the earlier marks AQUACEM.
24      As regards the relevant public and, firstly, the geographical scope, it should be noted that the earlier marks AQUACEM are protected in Germany, Austria, Belgium, Denmark, Spain, France, Ireland, Italy, Luxembourg, the Netherlands, Portugal and the United Kingdom. It is apparent from Article 8(1)(b) of Regulation 2017/1001 that the territories of those Member States are therefore the relevant territories in the present case, as was pointed out by the Board of Appeal in paragraph 19 of the contested decision. Secondly, as regards consumers of the goods at issue and their degree of attention, it should be noted that the goods covered by the marks at issue, in Classes 1, 5 and 10, are specialised instruments and materials for use in dentistry. They are therefore, as was noted by the Board of Appeal in paragraph 20 of the contested decision, targeted at specialists in that field who have a relatively high level of attention. Those findings are moreover not contested by the applicant.
25      As regards the comparison of the goods covered by the trade mark applied for and the earlier marks AQUACEM, firstly, it should be noted that those in Class 5 are identical. The goods in Class 5 covered by the trade mark applied for are either included in the broader categories designated by the earlier marks, or partly overlap. Secondly, the goods at issue in Class 10 are also identical. The ‘electric medical devices’ designated by the trade mark applied for partly overlap with the ‘dental and dental apparatus and instruments’ and the ‘instruments and devices for dental and/or dental technology’ covered by the earlier marks. The latter include in addition the other goods designated by the trade mark applied for and are in Class 10. Thirdly, as regards the goods in Class 1 designated by the trade mark applied for, namely the ‘laboratory alginates for dental technology purposes’ and the ‘silicones for dental implants’, it should be noted that they are similar to the ‘chemical products for dental and/or dental technology, dental materials; preparations and substances for dental use’ designated by some of the earlier marks and in Class 5. They are targeted at the same consumers and their producers and distribution channels can overlap. Therefore, it should be concluded, contrary to what is contended by the intervener, that the goods at issue are partly identical and partly similar.
The comparison of the signs at issue
26      Two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is, visually, phonetically or conceptually (judgment of 10 December 2014, Novartis v OHIM — Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 25).
27      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 proceed to analyse 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).
28      However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgment of 26 November 2015, Nürburgring v OHIM — Biedermann (Nordschleife), T‑181/14, not published, EU:T:2015:889, paragraph 23). Moreover, the consumer will break the word sign down into elements even if only one of its elements is familiar to him (see judgment of 18 May 2018, Italytrade v EUIPO — Tpresso (tèespresso), T‑67/17, not published, EU:T:2018:284, paragraph 53 and the case-law cited).
29      In the present case, the marks at issue are word signs consisting, respectively, of the words ‘aquaprint’ and ‘aquacem’.
30      As the Board of Appeal noted in paragraph 29 of the contested decision, it can be presumed that the relevant public, consisting of trained and educated specialists in the dental field, will understand the Latin word ‘aqua’ meaning ‘water’. In addition, the word ‘aqua’ is very close to its equivalents in Portuguese, Spanish and Italian, namely the words ‘água’, ‘agua’ and ‘acqua’, and constitute, particularly in French, a common prefix borrowed from Latin (see, to that effect, judgment of 28 January 2015, BSH v OHIM — Arçelik (AquaPerfect), T‑123/14, not published, EU:T:2015:52, paragraph 34). According to the case-law cited in paragraph 28 above, it must be noted that, when faced with the marks at issue, the relevant public will identify that element and will break down the marks AQUAPRINT and AQUACEM into two elements, namely, firstly, ‘aqua’ and ‘print’ and, secondly, ‘aqua’ and ‘cem’. That conclusion, moreover, is not called into question by the applicant.
31      The applicant contests by contrast the assessment made by the Board of Appeal of the distinctive and dominant character of the elements composing the marks at issue. In light of the case-law cited in paragraph 27 above, it is necessary to examine the applicant’s arguments relating to that question before making a visual, phonetic and conceptual comparison of the signs at issue.
–       The distinctive and dominant elements of the signs at issue
32      In paragraphs 30 to 33 of the contested decision, firstly, the Board of Appeal held that, although the element ‘aqua’ was not directly and entirely descriptive, it nevertheless possessed a weak distinctive character and that it did not particularly attract the attention of the relevant public. According to the Board of Appeal, the element ‘aqua’ alludes to at least one characteristic of the goods at issue, namely their suitability for functioning in a wet environment, whether that be the mouth of a patient, or a clinical or laboratory environment where contact with water is to be expected. Secondly, the Board of Appeal considered that, in light of the fact that the relevant public will understand the meaning of the English word ‘print’, that element of the trade mark applied for was not highly distinctive for those of the goods at issue which were used in the context of dental impressions. Thirdly, the Board of Appeal held that the idea that the element ‘cem’ could be perceived as an abbreviation of the word ‘cement’ was not substantiated by any evidence and that that element is thus unlikely to suggest any characteristic of the goods at issue.
33      The applicant contests that assessment. Firstly, it claims that the Board of Appeal was wrong to consider that the element ‘cem’ constituted a distinctive and strong element in the earlier marks. According to the applicant, the Board of Appeal’s finding according to which the element ‘cem’ did not have any meaning and was not descriptive of the goods at issue is wrong. In that regard, it claims in particular that that finding is in clear contradiction with the finding in paragraph 29 of the contested decision that the relevant public would break down the word ‘aquacem’ into two elements ‘aqua’ and ‘cem’.
34      Secondly, the applicant puts forward a series of arguments contesting the Board of Appeal’s finding that the element ‘aqua’ alludes to a characteristic of the goods at issue and has a weak distinctive character. In particular, the applicant claims that the goods at issue are dental goods ‘without any limitation to their application’ and that the marks at issue do not cover only goods which are compatible with water. Moreover, the applicant maintains that there is no clear link between the element ‘aqua’ and the goods at issue. The applicant claims, in that context, that, in practice, the consumer will not use the word ‘aqua’, which is moreover not an adjective, in order to refer to a characteristic of one of the goods at issue, that the Board of Appeal’s assertion according to which ‘aqua’ alludes to the suitability of the goods for functioning in a wet environment was not substantiated by any evidence and that that assertion involves too many steps so as to connect the element ‘aqua’ with the goods at issue. Furthermore, the applicant claims that any other conclusion would impose on the applicant for a trade mark the unreasonable burden to create a neologism. The applicant also claims that the fact that the goods at issue do not deform or degrade in water and do not easily oxidise in contact with water, is not relevant in relation to dental goods. Moreover, the applicant maintains that it is unlikely that a consumer who is confronted with a dental instrument in Class 10 with the word ‘aqua’ emblazoned on the front or side would deduce that that word possesses any descriptive or even allusive meaning with regard to that instrument. By contrast, according to the applicant, the use of that word in such a context is unusual and immediately suggests therefore that that element, in combination with the element ‘cem’, is an origin-indicator. Finally, the applicant puts forward that the concept of water has no relevance to ‘gels’, ‘cements’, ‘resins’ and to ‘dental equipment, machines and instruments’.
35      EUIPO and the intervener dispute the applicant’s arguments.
36      In the first place, it is necessary to examine whether the Board of Appeal was correct to consider that the element ‘aqua’ of the marks at issue had a weak distinctive character.
37      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of 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. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of the element in question and to ask whether it is at all descriptive of the goods for which the mark has been registered (judgment of 23 November 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — Papouis Dairies (Papouis Halloumi), T‑702/17, not published, EU:T:2018:832, paragraph 37).
38      In that regard, it should first be pointed out that the relevant public, which is composed of specialists in the dental field, will understand that the word ‘aqua’ means ‘water’. Next, it should be noted that the idea of water is unlikely to contribute to identifying the goods at issue, namely specialised instruments and materials for use in dentistry, as originating from a particular undertaking and thus to distinguishing those goods from those of other undertakings. As the Board of Appeal held, the word ‘aqua’ has a certain descriptive dimension in so far as it will be perceived by the relevant public, which has a high degree of attention, as alluding to a certain characteristic of the goods covered by the marks at issue.
39      In particular, as is maintained by EUIPO and the intervener, the idea of water will be perceived as referring to the fact that the goods at issue are suitable for functioning in a wet environment, whether that be the mouth of a patient, or a clinical or laboratory environment where contact with water is to be expected. As the Board of Appeal stated, at issue are dental materials and instruments which should not oxidise, deform or degrade in water. Moreover, the word ‘aqua’ alludes to the fact that some of the goods at issue, and in particular the alginates in Class 1 and the dental cement and the dental chalk in Class 5, must be mixed with water before being applied in the mouth of a patient. Furthermore, the element ‘aqua’ can also be perceived as referring, with regard to liquids for use in dentistry in Class 5, to their liquid state and, in the context of the dental instruments in Class 10, to the fact that some of them, in particular the apparatus for dental cleaning, require the use of water. Therefore, the concept of water evokes a range of associations with the goods at issue.
40      In those circumstances, it should be noted that the Board of Appeal was correct to hold that the inherent distinctive character of the element ‘aqua’ of the marks at issue was weak.
41      That conclusion is not called into question by the applicants’ arguments.
42      Firstly, it is necessary to reject the arguments seeking to establish that the characteristic relied upon by the Board of Appeal is not a characteristic of the goods at issue or, in any event, not a ‘relevant’ characteristic of those goods.
43      As regards the argument according to which, by virtue of their description, the goods at issue are not limited in their application and thus cover also goods which are not compatible with water, it should be noted that the applicant has not provided any concrete examples to substantiate that claim. Given that the goods at issue are specialised instruments and materials for dental use which are inter alia designed to be applied, either temporarily or permanently, in the mouth of a patient, the reason why those goods should not be characterised by being suitable for use in contact with water is obviously not evident. In any event, it should be noted that, since it is established, firstly, that the goods at issue can, where appropriate, have that characteristic, which is not contested by the applicant, and secondly, that the relevant public will perceive the element ‘aqua’ as referring to that characteristic, it is not relevant that there are also other goods corresponding to the description of the goods covered by the marks at issue cited in paragraphs 3 and 6 above, and which are not suitable for use in contact with water.
44      It is also necessary to reject the applicant’s claim that at issue is not a characteristic which has ‘relevance’ in connection with the dental goods covered by the marks at issue, in particular with regard to ‘gels’, ‘cements’, ‘resins’ and to ‘dental equipment, machines and instruments’. If an element is perceived as referring to a characteristic of the goods at issue, the question whether it is an essential, secondary of other characteristic of those goods is not decisive. Moreover, in light of the fact that the goods at issue are specialised instruments and materials designed to be inserted in the mouth of a patient, it is admittedly not excluded that it is possible that suitability for use in contact with water constitutes, in the eyes of the relevant public, an essential and therefore relevant characteristic of those goods.
45      Secondly, it is necessary to reject the series of arguments seeking to call into question the Board of Appeal’s finding that the relevant public will perceive the word ‘aqua’ as alluding to that characteristic.
46      First of all, it should be noted that the Board of Appeal relied, in the context of the assessment of the distinctiveness of the element ‘aqua’, on facts arising from practical experience generally acquired of the marketing of goods (see, to that effect, judgments of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 37, and of 10 February 2015, Innovation First v OHIM (NANO), T‑379/13, not published, EU:T:2015:84, paragraph 47). Therefore, it is necessary to reject the applicant’s argument that the Board of Appeal should have substantiated, corroborated by concrete evidence, its conclusion that the element ‘aqua’ will be perceived as referring to the suitability of the goods to function in a wet environment.
47      Next, the applicant’s argument relating to the lack of a ‘clear link’ between the word ‘aqua’ and the goods at issue must be rejected.
48      In so far as that argument calls into question the fact that the relevant public will perceive the word ‘aqua’ as alluding to a characteristic of the goods at issue, it is necessary first of all to note the findings set out in paragraphs 38 to 41 above. Moreover, it should be pointed out that, although it is admittedly true that, as the applicant claims, the word ‘aqua’ is not an adjective and that, as such, it will not be used to refer to a characteristic of the goods at issue, it remains the case that the relevant public will establish, without making a detailed analysis, a link between that word and the goods at issue, including the dental instruments in Class 10.
49      If the applicant’s argument must be understood as criticising the Board of Appeal for having found that the element ‘aqua’ possessed a weak distinctive character although it is not entirely descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, it must also be rejected.
50      It follows from the case-law cited in paragraph 37 above that, for the purposes of determining the distinctiveness of an element composing a mark, 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. In that context, the allusive character of an element composing a mark, like the descriptive or laudatory character of such an element, is capable of affecting its inherent distinctive character. The ability to enable the consumer to distinguish immediately and with certainty the goods covered by a mark, in so far as it contains that element, from the goods of other undertakings, is reduced in all the abovementioned situations. Therefore, as EUIPO maintains, the Board of Appeal was entitled to consider that the element ‘aqua’ had only weak distinctive character even if it was not entirely descriptive.
51      Thirdly, it is necessary to reject the applicant’s argument according to which the Board of Appeal’s assessment relating to the allusive nature of the element ‘aqua’ has the effect of preventing registration of marks containing the word ‘aqua’ because the Board of Appeal’s reasoning applies to all the existing goods. Apart from the fact that the applicant’s claim, according to which all the existing goods are suitable for use in contact with water, is clearly wrong, the applicant overlooks, firstly, the fact that the Board of Appeal did not hold that the element ‘aqua’ had no distinctive character, but only that it possessed a weak distinctive character, and, secondly, that, as is contended by EUIPO, the applicant for an EU trade mark remains free to combine elements which are not or are weakly distinctive with other elements in order to allow the registration of a mark.
52      In the light of the foregoing, it is necessary to confirm the Board of Appeal’s assessment that the inherent distinctive character of the element ‘aqua’ is only weak.
53      In the second place, regarding the distinctiveness of the element ‘print’ of the trade mark applied for, it should be noted, as observed by the Board of Appeal, that the relevant public, which consists of trained and educated specialists in the dental field, will be able to understand the meaning of that English word. It follows that the element ‘print’ is only weakly distinctive in comparison with those of the goods covered by the marks at issue which are used in the context of dental impressions. As regards the rest of the goods concerned, it possesses an average distinctive character. That conclusion is, moreover, not called into question by the applicant.
54      In the third place, regarding the distinctiveness of the element ‘cem’ of the earlier marks AQUACEM, it should be noted that the Board of Appeal considered that the idea that the element ‘cem’ could be perceived as an abbreviation of the word ‘cement’ was not substantiated by any evidence and that it was therefore unlikely that that element would suggest a characteristic of the goods at issue.
55      In that regard, firstly, it must be noted that, contrary to what is claimed by the applicant, that assessment is not inconsistent with the finding that the relevant public will break down the word ‘aquacem’ into the two elements ‘aqua’ and ‘cem’. It is apparent from the case-law cited in paragraph 28 above that, as is also contended by EUIPO and the intervener, it is not necessary for the two elements ‘aqua’ and ‘cem’ to have a concrete meaning for the relevant public to break down the word ‘aquacem’ into those elements.
56      Secondly, it is necessary to examine whether the Board of Appeal was correct to hold that it was excluded that the element ‘cem’ would be perceived as an abbreviation of the word ‘cement’ or as a reference thereto. In that regard, it must be noted that, indeed, the element ‘cem’, in itself, has no concrete meaning, as was found by the Board of Appeal.
57      That being so, it is also necessary to take into consideration the fact that the element ‘cem’ bears a strong resemblance to the word ‘cement’ in English, Danish and Dutch and the Italian word ‘cemento’, as well as a certain resemblance to the French word ‘ciment’ and its equivalents in the other languages which are relevant in the present case, namely ‘cimento’ in Portuguese and ‘Zement’ in German. Moreover, it is clear that cement plays an important role as a fixing and sealing material in the dental field.
58      In those circumstances, it can be considered that at least a non-negligible part of the relevant public will perceive the element ‘cem’ as an abbreviation of or reference to the word ‘cement’. In the view of that part of the relevant public the distinctive character of the element ‘cem; will therefore be reduced, in relation to part of the goods at issue, namely, above all the ‘cements’ and ‘dental cement’ in Class 5. By contrast, the element ‘cem’ has an average distinctive character with respect to the goods which have no connection with dental cement and in the view of the part of the relevant public which will not perceive the element ‘cem’ as referring to cement.
59      In the fourth place, as regards the dominant elements of the marks at issue, it is necessary to reject the applicant’s argument according to which, firstly, the Board of Appeal wrongly considered that the elements ‘cem’ and ‘print’ dominated the marks at issue and, secondly, the element ‘aqua’, positioned at the beginning of the marks at issue, must be considered to be the dominant element of those marks.
60      Contrary to what is claimed by the applicant, the Board of Appeal did not find that the overall impression conveyed to the relevant public by the marks at issue was dominated by the elements ‘cem’ and ‘print’. By contrast, it follows in essence from paragraphs 30 to 33 and 45 of the contested decision that the Board of Appeal found no dominant element in the marks at issue. It restricted itself to considering that the impact of the element ‘aqua’ on the overall impression produced by those marks was limited due in particular to its weak distinctive character.
61      That conclusion is not called into question by the applicant’s arguments. Even if, as the applicant states, the consumer normally pays more attention to the beginning of a word (judgment of 11 June 2014, Klingel v OHIM — Develey (JUNGBORN), T‑401/12, not published, EU:T:2014:507, paragraph 30), the fact remains that that is not so in the present case since the marks at issue are relatively short word signs and the element ‘aqua’ has weak distinctive character. Therefore, the element ‘aqua’ is neither more dominant nor more visible than the elements ‘cem’ and ‘print’ of the marks at issue, with which it forms, in all of the marks at issue, a single word. As is contended by EUIPO, it is therefore not possible to consider that the element ‘aqua’ constitutes the dominant element of the marks at issue.
62      It is in the light of the foregoing considerations that it is necessary therefore to examine whether the visual, phonetic and conceptual comparison of the marks at issue made by the Board of Appeal is vitiated by errors.
–       The visual, phonetic and conceptual similarity
63      In paragraphs 34 to 37 of the contested decision, the Board of Appeal stated that the marks at issue were visually and phonetically similar only to a low degree and conceptually different. According to the Board of Appeal, the weak degree of visual and phonetic similarity was due to the weak distinctive character of the common element ‘aqua’ and to the complete visual and phonetic dissimilarity between the elements ‘print’ and ‘cem’. Conceptually, the Board of Appeal held that the word ‘aquaprint’, taken as a whole, evoked the idea of a picture, design or composition made out of water, or even a ‘water colour’ or ‘aquarelle’, whereas the word ‘aquacem’ had no meaning, which means according to it that the marks at issue were conceptually different.
64      The applicant contests that assessment and claims that the marks at issue have a high degree of visual similarity and at least an average degree of phonetic and conceptual similarity.
65      As regards the visual comparison, the applicant claims that the common element ‘aqua’ is highly distinctive and constitutes the dominant element of the marks at issue, that the first part of a mark is generally that which attracts the public’s attention, that the marks at issue have almost the same length, that the element ‘aqua’ will be better remembered than the descriptive element ‘print’ of the trade mark applied for or than the short element ‘cem’ of the earlier marks, and that the elements ‘print’ and ‘cem’ are placed at the end of the marks at issue, so that the relevant public would probably not notice the difference, which would in any event not be sufficient to offset the similarities between the marks at issue.
66      As regards the phonetic similarity, the applicant claims that the marks at issue start with the element ‘aqua’, that the relevant public will concentrate on that element without necessarily pronouncing the other elements, that the marks at issue possess the same number of syllables, namely three, that their first two syllables are identical, and that the elements ‘print’ and ‘cem’ are, despite their differences, very similar in length in so far as they amount to one syllable.
67      As regards the conceptual similarity, the applicant claims that there is no evidence permitting it to be concluded that the word ‘aquaprint’ will be understood to mean ‘water colour’ or ‘aquarelle’. According to the applicant, the element ‘aqua’, which is common to the marks at issue, is the dominant and distinctive element of those marks and makes them highly similar in the eyes of the relevant public. Moreover, the applicant alleges that the contested decision contains a contradiction. The Board of Appeal could not legitimately hold, on the one hand, that the marks at issue are only visually and phonetically similar to a low degree due to the descriptive character of the common element ‘aqua’, and, on the other hand, that the marks at issue are conceptually different.
68      Moreover, the applicant claims that, even assuming that the distinctive character of the element ‘aqua’, which is common to the mark at issue, is weak, the degree of visual, phonetic and conceptual similarity should be classified as average, in accordance with the decision-making practice of EUIPO and the solutions adopted in the judgments of 29 March 2012, Omya v OHIM — Alpha Calcit (CALCIMATT) (T‑547/10, not published, EU:T:2012:178), and of 28 January 2015, AquaPerfect (T‑123/14, not published, EU:T:2015:52).
69      EUIPO and the intervener dispute the applicant’s arguments.
70      In that regard, it should first be noted that the signs at issue are word signs composed of a single word, which have in common the sequence of letters ‘a’, ‘q’, ‘u’ and ‘a’ at the beginning. The signs at issue are however distinguished by the fact that, concerning the rest, they are composed of different letters, namely, respectively, the sequence of letters ‘p’, ‘r’, ‘i’, ‘n’, ‘t’ in the trade mark applied for and the sequence of letters ‘c’, ‘e’, ‘m’ in the earlier marks.
71      Regarding the visual comparison, although it cannot be denied that the sequence of common letters ‘a’, ‘q’, ‘u’, and ‘a’ at the beginning of the word, introduces elements of visual similarity between the signs at issue, it is necessary nevertheless to uphold the Board of Appeal’s assessment that the visual similarity between the signs at issue, taken together, is only weak.
72      In that regard, it should be noted that, contrary to what is claimed by the applicant, the impact of the common element ‘aqua’ on the overall impression produced by the marks at issue is not increased by any dominant or distinctive character. As is apparent from the considerations set out in paragraphs 36 to 52 above, the relevant public will perceive that sequence of letters as an allusion to a characteristic of the goods at issue and will therefore attach no particular importance to that element, or to the fact that it is at the beginning of the marks at issue.
73      Moreover, the Board of Appeal correctly held that the other letters making up the marks at issue are visually completely different. As is contended by EUIPO, the elements ‘print’ and ‘cem’ have no letters in common and are of a different length. Contrary to what is claimed by the applicant, it is not possible to consider that the relevant public will probably not notice the elements ‘print’ and ‘cem’ due to the fact that they are placed at the end of the marks at issue. By contrast, in view of the high level of attention of that public and in light of the weak distinctive character of the prefix ‘aqua’, it will notice them immediately. That is all the more so with respect to the goods for which the distinctive character of the elements ‘print’ and ‘cem’ is average, as was stated in paragraphs 53 and 58 above.
74      In those circumstances, it must be concluded that the common points between the marks at issue are offset to a large extent by the differences between those marks, meaning that, taken as a whole, they have only a weak visual similarity.
75      Similar considerations apply to the phonetic similarity of the signs. Admittedly, the signs at issue all consist of three syllables, the pronunciation of the first two syllables ‘a’ and ‘qua’ being identical. That being the case, the pronunciation of the last syllables, namely ‘print’ and ‘cem’, do not have any elements in common, with the result that, taken together, the marks at issue are only weakly phonetically similar. That conclusion is not called into question by the applicant’s claim that the relevant public will concentrate on the element ‘aqua’ and pronounce that element without necessarily pronouncing the elements ‘print’ and ‘cem’. That claim is not substantiated by any concrete evidence. Moreover, it is not compatible with the considerations set out in paragraphs 36 to 52 and 59 above, according to which the element ‘aqua’ has only a weak distinctive character and does not dominate the overall impression produced by the marks AQUAPRINT and AQUACEM.
76      Finally, as regards the conceptual comparison, it is necessary to examine whether the Board of Appeal was correct to hold, unlike the Opposition Division, that the signs at issue were not weakly similar, but different.
77      It must be noted that the marks at issue evoke the concept of water due to the common Latin root ‘aqua’. Therefore, the marks at issue converge conceptually to a certain extent, as is pointed out by the applicant. Although it is true that the impact of the common element ‘aqua’ on the overall conceptual impression produced by the marks at issue is reduced due to its weak distinctive character, the fact remains that, as was noted in paragraph 30 above, the relevant public will distinguish the element ‘aqua’ when perceiving the marks at issue. That conclusion is not called into question by the fact that the word ‘aquacem’, taken as a whole, has no meaning, and that is so even assuming that the word ‘aquaprint’, as a whole, produces the idea of a picture, design or composition made out of water, or even a ‘water colour’ or ‘aquarelle’.
78      That being the case, it cannot be denied that the respective endings of the words ‘aquaprint’ and ‘aquacem’ constitute, also conceptually, a clear difference between the marks at issue. In view of the fact that the semantic content of the English word ‘print’ will be immediately understood by the relevant public, the trade mark applied for refers also to the idea of printing and thus to a very different concept from that evoked by the earlier marks AQUACEM. As is apparent from the considerations set out in paragraphs 55 to 57 above, the element ‘cem’ of the earlier marks will be perceived either as meaningless or as referring to the idea of ‘cement’.
79      The marks at issue have therefore, as a result of their respective suffixes, a different connotation, in particular for a well-informed public, with a high degree of attentiveness. However, it must be noted that, contrary to the Board of Appeal’s findings and contrary to what is contended by EUIPO and the intervener, the abovementioned differences are not sufficient to exclude all conceptual similarity between the marks at issue. It must therefore be concluded that the marks at issue are, also conceptually, similar to a certain degree, even if weakly.
80      In the light of the foregoing, it must be concluded that, despite the presence of the identical element ‘aqua’, the marks at issue have a weak visual, phonetic and conceptual similarity.
81      That conclusion is moreover not called into question by the applicant’s claim that the degree of similarity of the marks at issue should, at least, be described as average, in accordance with the findings in the decision of the First Board of Appeal of EUIPO of 31 January 2017 (Case R 340/2016-1) or in the judgments of 29 March 2012, CALCIMATT (T‑547/10, not published, EU:T:2012:178), and of 28 January 2015, AquaPerfect (T‑123/14, not published, EU:T:2015:52).
82      As regards the decision of the First Board of Appeal of EUIPO of 31 January 2017 (Case R 340/2016-1), it should be noted that, according to the case-law, the legality of the decisions must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU Courts, and not on the basis of the previous decision-making practice of those Boards (judgment of 1 March 2018, Altunis v EUIPO — Hotel Cipriani (CIPRIANI), T‑438/16, not published, EU:T:2018:110, paragraph 56). In any event, in light of the fact that, in that decision of 31 January 2017, the Board of Appeal relied not only on the fact that the marks at issue had in common the prefix ‘duo’, but also on the distinctive character of that element and, in particular, on the similarity of the suffixes ‘vent’ and ‘va’ of the marks at issue, the outcome of that decision is not applicable to the present case. The applicant was therefore not entitled to rely on that decision in order to substantiate its claim that the similarity of the marks at issue should be classified as at least average.
83      That conclusion also applies in respect of the judgments of 29 March 2012, CALCIMATT (T‑547/10, not published, EU:T:2012:178), and of 28 January 2015, AquaPerfect (T‑123/14, not published, EU:T:2015:52), since the finding of an average degree of similarity between the signs at issue in those cases, namely, firstly, the marks AQUAPERFECT and WATERPERFECT, and, secondly, the marks CALCIMATT and CALCILAN, was based on the assessment that the non-identical elements of the abovementioned marks were also similar to a certain degree. That is however not so in the present case of the element ‘cem’ and ‘print’.
Global assessment of the likelihood of confusion
84      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).
85      In paragraphs 38 to 45 of the contested decision, the Board of Appeal held that, despite the partial identity of the goods covered by the marks at issue, there was no risk that the relevant public could believe that those goods came from the same undertaking or from economically linked undertakings. In that regard, it found that the weak degree of visual and phonetic similarity was offset by the conceptual differences and that the consumers of the goods at issue were specialists in the dental field who show a relatively high degree of attention during the purchase of those goods, which would reduce the likelihood of confusion. Moreover, the Board of Appeal held that the evidence provided by the applicant was not sufficient for the purposes of establishing that the earlier marks enjoyed an enhanced distinctive character. Furthermore, the Board of Appeal noted that the element ‘aqua’, which has a weak distinctive character, constituted the only common element of the marks at issue and that those marks did not moreover have the same semantic structure in light of the fact that the earlier marks were a combination of the word ‘aqua’ and of the word ‘cem’, which has no meaning, whereas the trade mark applied for is a combination of the word ‘aqua’ and of the word ‘print’, which has a clear meaning.
86      The applicant contests that assessment and claims that there is a likelihood of confusion between the marks at issue in light of the identity and the similarity of the goods covered and as a result of the high degree of visual, phonetic and conceptual similarity between them. Firstly, the applicant claims that the Board of Appeal started from the wrong assumption that the element ‘aqua’ possessed only weak distinctive character. Secondly, the applicant claims that the Board of Appeal wrongly considered that the alleged conceptual differences neutralised the visual and phonetic similarities in the present case. Thirdly, the applicant complains that the Board of Appeal overlooked the fact that the distinctive character of the earlier marks was recognised in the respective registration procedures. In that context, the applicant also puts forward that, even assuming that the earlier marks have a weak distinctive character, there is a likelihood of confusion in the present case. Fourthly, the applicant claims that, in any event, the existence of a likelihood of confusion could not be excluded with respect to the all of the different goods covered by the marks at issue.
87      EUIPO and the intervener dispute those arguments.
88      In that context, it is important to note that, according to the case-law cited in paragraphs 22 and 84 above, 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 and services covered.
89      It is true that, in the present case, the goods at issue are, as the applicant claims, identical in part.
90      By contrast, regarding the comparison of the signs at issue, it results from the findings made in paragraphs 70 to 83 above that, contrary to what is claimed by the applicant, those signs have only a weak degree of visual, phonetic and conceptual similarity. Admittedly, contrary to the findings of the Board of Appeal, the signs at issue are not conceptually different. However, that does not call into question the fact that the similarities between the signs at issue are not particularly significant in the present case. They are restricted to the presence of the element ‘aqua’, which has a weak distinctive character, and are offset to a large extent by the presence of the words ‘cem’ and ‘print’. Although those elements can also have a weak distinctive character with respect to certain goods and for certain parts of the relevant public, they give rise to a clear difference between the signs at issue, taken together. The circumstances of the case are therefore such that the relevant public will clearly distinguish the signs at issue, even if they have a weak degree of similarity due to the element ‘aqua’.
91      Moreover, the Board of Appeal correctly pointed out that, due to the objective characteristics of the goods at issue, the relevant public would purchase them only after a particularly attentive examination, and that that fact reduced the likelihood of confusion in the present case. It results from the considerations set out in paragraph 24 above that the goods at issue are specialised instruments and materials for use in dentistry targeted at a professional public, namely trained and educated specialists in the dental field, who have a high level of attention. It is in particular in light of the fact that at issue are goods which can have consequences for the health of patients that it is possible to consider that those goods will be subject to a particularly attentive examination when they are purchased by the relevant public.
92      Furthermore, regarding the distinctive character of the earlier marks AQUACEM, the Board of Appeal considered, in paragraphs 44 and 53 to 55 of the contested decision, in essence, that the evidence submitted by the applicant did not support a finding that the earlier marks had acquired a high degree of distinctiveness through their use. That assessment, which is moreover not called into question by the applicant, must be upheld. Moreover, it must be noted that the inherent distinctive character of the earlier marks AQUACEM varies from weak to average depending on the goods and the understanding by the relevant public of the element ‘cem’, in accordance with the considerations set out in paragraphs 54 to 58 above.
93      The applicant is wrong to complain, in that context, that the Board of Appeal overlooked the fact that the distinctive character of the earlier marks had been recognised in the respective national registration procedures. Although it is true that the validity of a national mark cannot be called into question during opposition proceedings against an application for registration of a European Union trade mark, the fact that a national mark was registered means solely that it enjoys a minimum level of inherent distinctiveness and not, as the applicant seems to claim, an average or high level of distinctiveness.
94      In light of the abovementioned considerations, it must be held that the differences between the marks at issue are sufficient to prevent the similarities due to the fact that they have in common the element ‘aqua’ from creating the risk that the relevant public could believe that the goods at issue come from the same undertaking or economically linked undertakings.
95      The Board of Appeal was correct to hold that there was no likelihood of confusion in the present case.
96      In view of all of the foregoing, it is necessary to reject the first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
The second plea in law, alleging infringement of Article 8(4) of Regulation 2017/1001
97      In the context of the second plea in law, the applicant complains that the Board of Appeal rejected its opposition based on the Article 8(4) of Regulation 2017/1001 and the United Kingdom law on passing off.
98      Pursuant to Article 8(4) of Regulation 2017/1001, the proprietor of a sign, other than a registered trade mark, may oppose the registration of an EU trade mark if that sign satisfies four cumulative conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative; thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation 2017/1001 cannot succeed (see judgment of 12 October 2017, Moravia Consulting v EUIPO — Citizen Systems Europe (SDC‑888TII RU),
T‑317/16, not published, EU:T:2017:718, paragraph 38 and the case-law cited).
99      The first two conditions, namely those concerning the use and significance of the sign relied on, which must be more than merely local, arise from the very wording of Article 8(4) of Regulation 2017/1001 and must therefore be interpreted in the light of EU law. Therefore, Regulation 2017/1001 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 12 October 2017, SDC‑888TII RU, T‑317/16, not published, EU:T:2017:718, paragraph 39 and the case-law cited).
100    By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to ... the law of the Member State governing that sign’ that the two other conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation 2017/1001, are conditions laid down by that regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation 2017/1001 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark. In accordance with Article 95(1) of Regulation 2017/1001, the burden of proving that the last-mentioned condition is satisfied lies with the opponent before EUIPO (see judgment of 12 October 2017, SDC‑888TII RU, T‑317/16, not published, EU:T:2017:718, paragraph 40 and the case-law cited).
101    Moreover, and in so far as the applicant invokes in support of its opposition the action for passing off provided for under United Kingdom law, it should be noted that, as is apparent from paragraph 61 of the contested decision, the applicable law of the Member State, in the present case, is the Trade Marks Act 1994, Paragraph 5(4) of which provides inter alia:
‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented: (a) by virtue of any rule of law (in particular, the law of passing-off) protecting an unregistered trade mark or other sign used in the course of trade ...’
102    The Court has already held that it follows from section 5(4) of the United Kingdom Law on Trade Marks, as interpreted by the national courts, that the party invoking that provision must establish, in accordance with the legal rules governing actions for passing-off, as laid down by the laws of the United Kingdom, that three conditions are satisfied: first, the goodwill acquired by the sign at issue; second, misrepresentation by the proprietor of the subsequent mark; and, third, damage caused to that goodwill (judgment of 6 December 2018, Fifth Avenue Entertainment v EUIPO — Commodore Entertainment (THE COMMODORES), T‑459/17, not published, EU:T:2018:886, paragraph 32).
103    According to the national case-law, misrepresentation by a defendant in an action for passing-off, whether or not it is intentional, is a representation which is likely to lead the claimant’s customers to attribute to it the commercial origin of the goods and services offered by the defendant (judgment of 11 June 2009, Last Minute Network v OHIM — Last Minute Tour (LAST MINUTE TOUR), T‑114/07 and T‑115/07, EU:T:2009:196, paragraph 92).
104    In the present case, the Board of Appeal based its rejection of the applicability of Article 8(4) of Regulation 2017/1001 on the assessment that the second of the abovementioned conditions, namely that relating to misrepresentation, was not satisfied. Firstly, as regards the trade mark applied for and the earlier unregistered mark AQUACEM, the Board of Appeal referred to its observations relating to the lack of a likelihood of confusion between the marks AQUAPRINT and AQUACEM, for the purposes of Article 8(1)(b) of Regulation 2017/1001. In the light of those considerations, it was not possible to find the existence of misrepresentation in the present case. Secondly, as regards the trade mark applied for and the unregistered mark AQUASIL, the Board of Appeal held that the visual and phonetic similarities between them due to the identity of the element ‘aqua’, with weak distinctive character, were not sufficient to result in misrepresentation. According to the Board of Appeal, the observations relating to the lack of a likelihood of confusion between the marks AQUAPRINT and AQUACEM apply mutatis mutandis
in the present case. Thirdly, the Board of Appeal noted that the absence of misrepresentation led to the dismissal of the passing off action since, in accordance with the applicable national law, the three conditions, namely the existence of ‘goodwill’, misrepresentation and damage were cumulative.
105    The applicant contests the Board of Appeal’s findings and refers, in essence, to its arguments relating to the existence of a likelihood of confusion between the marks AQUAPRINT and AQUACEM, for the purposes of Article 8(1)(b) of Regulation 2017/1001. According to the applicant, the same reasoning results in the use of the trade mark applied for constituting also a misrepresentation of the earlier mark AQUASIL. Moreover, the applicant claims that the Board of Appeal committed an error by disregarding the evidence submitted by the applicant in order to substantiate the ‘goodwill’ of the earlier marks.
106    EUIPO and the intervener dispute the applicant’s arguments.
107    In the first place, it is necessary to examine, in order to determine whether the presentation in question constitutes misrepresentation, whether the offer of the goods at issue in the United Kingdom under the trade mark applied for AQUAPRINT is capable of leading the public to attribute the commercial origin of those goods to the applicant which marketed its goods under the signs AQUACEM and AQUASIL. In that context, it is necessary to assess, on the basis of a balance of probabilities, whether it is likely that a substantial number of persons belonging to the public concerned would be led to purchase a product of the intervener mistakenly believing it to be a product of the applicant.
108    As regards the comparison between the trade mark applied for and the unregistered mark AQUACEM, it is necessary to note the findings made in the context of the first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In the light of those findings, in particular in view of the different endings of the words ‘aquaprint’ and ‘aquacem’ and the weak distinctive character of the common element ‘aqua’, it is necessary to reject the applicant’s argument relating to the existence of misrepresentation in the present case. In the light of the circumstances of the case, it can be concluded that the offer of the goods at issue under the trade mark applied for AQUAPRINT in the United Kingdom is not capable of leading the specialised public with a high degree of attention to purchase the product of the intervener mistaking it for the product of the applicant.
109    As regards the comparison between the trade mark applied for and the unregistered mark AQUASIL, firstly, it should be noted, concerning the overall impression produced by the latter, that the relevant public will break down the word ‘aquasil’ into two elements ‘aqua’ and ‘sil’, that the distinctive character of the element ‘aqua’ is weak whilst the element ‘sil’, which has no concrete meaning in connection with the goods at issue, has an average inherent distinctive character.
110    Secondly, regarding the comparison of the signs AQUAPRINT and AQUASIL, it must be noted that, although it is indeed true that they have a certain degree of visual, phonetic and conceptual similarity due to the presence of the common element ‘aqua’, it is also true that the elements ‘print’ and ‘sil’, with the exception of the letter ‘i’, have nothing in common and therefore introduce a clear difference between the signs at issue, taken together. By taking into account the weak distinctive character of the element ‘aqua’, the signs AQUAPRINT and AQUASIL can thus be considered to have only a weak degree of visual, phonetic and conceptual similarity.
111    Thirdly, the question whether the offer of the goods at issue in the United Kingdom under the trade mark applied for AQUAPRINT is capable of leading the public to attribute the commercial origin of those goods to the applicant which markets its goods in the United Kingdom under the sign AQUASIL, should be answered in the negative. In view of the above considerations, and the fact that the goods at issue are targeted at trained and educated specialists in the dental field displaying a high level of attention at the time of their purchase, it is unlikely that a large number of those specialists will be led to purchase a product of the intervener mistaking it for a product of the applicant.
112    Therefore, it must be concluded that, unlike what is claimed by the applicant, it cannot be considered that the second condition of the passing off action is satisfied in the present case.
113    In the second place, it must be noted that it follows from the case-law cited in paragraph 102 above that the three conditions for a passing off action provided for by the United Kingdom law are cumulative. In view of the absence of misrepresentation in the present case, the applicant was therefore wrong to complain that the Board of Appeal disregarded the evidence it had submitted in order to substantiate the ‘goodwill’ of the earlier national marks AQUACEM and AQUASIL.
114    In those circumstances, the applicant’s second plea in law must be rejected, and, therefore, the application must be dismissed in its entirety.
Costs
115    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 and the intervener.
116    In addition, the intervener’s request that the amount of costs which the applicant was ordered to pay by the Opposition Division and by the Board of Appeal be confirmed, amounts to a request for the application to be dismissed and therefore coincides with its first head of claim.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dentsply De Trey GmbH to pay the costs.
Gratsias
Dittrich
Ulloa Rubio
Delivered in open court in Luxembourg on 23 May 2019.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.