Provisional text
JUDGMENT OF THE GENERAL COURT (First Chamber)
20 September 2018 (*)
‘EU trade mark — Opposition proceedings — Application for EU word mark UROAKUT — Earlier national and international figurative marks UroCys — Relative grounds for refusal — No likelihood of confusion — Power to alter decisions — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)’
In Case T‑266/17,
Kwizda Holding GmbH, established in Vienna (Austria), represented by L. Wiltschek, D. Plasser and K. Majchrzak, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being
Dermapharm GmbH, established in Vienna, represented by H. Kunz-Hallstein and R. Kunz-Hallstein, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 March 2017 (Case R 1221/2016-4), relating to opposition proceedings between Dermapharm and Kwizda Holding,
GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 9 May 2017,
having regard to the response of EUIPO lodged at the Registry of the Court on 5 July 2017,
having regard to the response of the intervener lodged at the Registry of the Court on 18 July 2017,
having regard to the fact that no request for a hearing was submitted by the parties within the period of 3 weeks after service of notification of the close of the written part of the procedure and having decided, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule without an oral part of the procedure,
gives the following
Judgment
Background to the dispute
1 On 20 March 2015, the applicant, Kwizda Holding GmbH, 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 trade mark in respect of which registration was sought is the word sign UROAKUT.
3 The goods for which registration was sought fall within Class 5 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: ‘Dietary supplements and dietetic preparations; Medical and veterinary preparations and articles’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2015/058, of 26 March 2015.
5 On 26 June 2015, the intervener, Dermapharm GmbH, filed a notice of opposition, pursuant to Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001), to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier trade marks:
– the Austrian figurative mark reproduced below, applied for on 5 December 2011 and registered on 28 March 2012 under number 6034/2011, covering, inter alia, goods falling within Class 5 and corresponding to the following description: ‘Dietetic substances and food supplements adapted for medical use, other than for treating or preventing gout’;
– the international registration of the abovementioned trade mark, obtained on 5 June 2012 and bearing number 1137575, with protection extending to Germany, for the goods in Class 5 mentioned in the above first indent of this paragraph 6.
7 The grounds relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 3 May 2016, the Opposition Division upheld the opposition in its entirety, refused the application for registration and ordered the applicant to pay the costs.
9 On 4 July 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 7 March 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and upheld the refusal of the application for registration at issue. After finding that the relevant public consisted of the German-speaking general public, residing in Germany and Austria, which is reasonably well informed and reasonably observant and circumspect, and the specialist public in the medical and pharmaceutical sector, which displays a high level of attention, the Board of Appeal confirmed that the goods in question were identical or highly similar. Next, it upheld the Opposition Division’s conclusion that the signs in question had an average degree of visual and aural similarity, due to the common initial component ‘uro’, their identical structure and their similar length. Conceptually, the Board of Appeal took the view that the signs in their entirety did not have any meaning for the relevant public, so that it was the fact that the beginnings of the signs were identical that led to a ‘certain degree of conceptual similarity’. Consequently, in view of the average distinctive character of the earlier trade marks, the Board of Appeal concluded that there was a likelihood of confusion, including for the specialist public, whose level of attention was high.
Forms of order sought
11 The applicant claims that the Court should:
– uphold the action and amend the contested decision to reject the intervener’s opposition;
– in the alternative, annul the contested decision and refer the case back to the Board of Appeal of EUIPO;
– order EUIPO to pay the costs of the proceedings before the Court and the Board of Appeal;
– order the intervener to pay the costs incurred in the proceedings before the Opposition Division.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies upon a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14 It argues, in essence, that the Board of Appeal was wrong to conclude that, with regard to the earlier trade marks and the trade mark applied for, there was a likelihood of confusion on the part of the relevant public.
15 EUIPO and the intervener challenge the applicant’s arguments.
16 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 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.
17 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 judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 33 and the case-law cited, and of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).
18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited; judgment of 22 September 2016, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 45).
19 In light of those considerations, it is necessary to examine if the Board of Appeal was right to take the view that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Relevant territory
20 It is clear from paragraph 12 of the contested decision that the Board of Appeal considered that the relevant territory was that of Germany and Austria, that is the territories in which the earlier trade marks were protected. That finding, which, furthermore, is not disputed, must be upheld.
Relevant public and its level of attention
21 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 74; see, also, judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22 In the present case, the Board of Appeal found, in paragraphs 12 and 21 of the contested decision, that the relevant public was the German-speaking public in Germany and Austria and that the goods in question in Class 5 targeted, on the one hand, the general public, which is to be regarded as being reasonably well informed and reasonably observant and circumspect, and having an average level of attention, and, on the other, the specialist public in the medical and pharmaceutical sector, whose level of attention is high.
23 Although the applicant does not call into question the definition of the relevant public, it does, however, dispute the Board of Appeal’s finding that the average consumer concerned is part of the ‘general public’ displaying an average level of attention. The applicant maintains that medical or dietetic preparations and dietary supplements target a public which has particular dietetic needs, so that both the specialist public and the average consumer will have an increased or high level of attention with regard to the goods concerned, regardless of whether they are prescription goods or not.
24 EUIPO and the intervener challenge the applicant’s arguments.
25 First of all, it should be recalled that, when the goods in question are medicines or pharmaceutical products, the relevant public is composed of medical professionals, on the one hand, and patients, as the end consumers, on the other (see judgments of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 21 and the case-law cited, and of 5 October 2017, Forest Pharma v EUIPO — Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 49). That definition of the relevant public, as established by the Board of Appeal, must, therefore, be upheld.
26 Next, according to the case-law, medical professionals have a high level of attentiveness when prescribing medicines. Moreover, with regard to end consumers, it is apparent from the case-law that in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of interest to consumers who are deemed to be reasonably well informed and reasonably observant and circumspect, since those goods affect their state of health, and that these consumers are less likely to confuse different categories of goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high level of attentiveness upon prescription of the goods at issue in the light of the fact that those goods are pharmaceutical products. Thus, medicines, whether or not issued on prescription, can be regarded as receiving a heightened level of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (see judgment of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 26 and the case-law cited).
27 It follows from that case-law that those considerations are also applicable if the pharmaceutical products in question are intended to treat minor complaints and ailments (judgment of 13 May 2015, Ferring v OHIM — Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 31), which applies to certain urinary-tract complaints.
28 The same is true of dietetic products in general and of dietary supplements, which strictly speaking are not medicines, but nevertheless constitute goods in the field of health, since in general they are intended to improve health, which may be regarded as products to which consumers, who are reasonably well informed and reasonably observant and circumspect, pay a high level of attention (judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 19; see also, to that effect, judgment of 15 December 2009, Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 28).
29 In the present case, the goods covered by the trade mark applied for falling within Class 5 are all designed essentially to be sold on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian. In light of their direct effect on the health of the user and of the specific nature of the illnesses which they seek to treat, it must be held that consumers will generally be well informed and particularly observant and circumspect, so that the relevant public will display a high level of attention, in the case of both the public at large and the professional public (see, to that effect, judgments of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 32, and of 13 December 2017, Laboratorios Ern v EUIPO — Ascendo Medienagentur (SLIMDYNAMICS), T‑700/16, not published, EU:T:2017:896, paragraph 24).
30 It follows from the foregoing that the Board of Appeal was wrong to find, in paragraph 21 of the contested decision, that part of the relevant public would display only an average level of attention.
Comparison of the goods
31 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to them should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21 and the case-law cited, and 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).
32 In the present case, the Board of Appeal found, in paragraphs 14 and 15 of the contested decision, that the contested goods in Class 5 are either identical or highly similar to the goods covered by the earlier trade marks.
33 Those findings, which, moreover, are not disputed by the applicant, must be upheld.
Comparison of the signs
34 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. 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 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).
35 For the purposes of determining 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 or services for which the mark was registered as coming from a particular undertaking and, thus, to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 12 July 2012, Winzer Pharma v OHIM — Alcon (BAÑOFTAL), T‑346/09, not published, EU:T:2012:368, paragraph 78).
36 In the present case, the Board of Appeal found that the signs at issue had an average degree of visual and aural similarity and a ‘certain degree of conceptual similarity’. The Board of Appeal added, in paragraph 22 of the contested decision, that the inherent distinctive character of the earlier trade marks was average and that there were no clear indications that the overall term ‘urocys’ had descriptive connotations.
37 The applicant challenges that assertion, and claims that the ‘uro’ component is purely descriptive and that there are considerable visual, aural and conceptual differences between the signs at issue.
38 EUIPO and the intervener challenge the applicant’s arguments.
39 First of all, it should be recalled that while the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he will, nevertheless, perceiving a verbal sign, break it down into verbal elements which, for him, have a concrete meaning or which resemble words known to him (see judgment of 6 September 2013, Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 104 and the case-law cited).
40 In addition, although the signs at issue are identical in terms of the initial component ‘uro’, it is settled case-law that assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).
41 The fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark (see judgment of 13 May 2015, easyGroup IP Licensing v OHIM — TUI (easyAir-tours), T‑608/13, not published, EU:T:2015:282, paragraph 50 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42).
42 In the present case, it should be noted that it is not disputed that the ‘uro’ component refers to the field of urology. As EUIPO essentially argues, since the relevant public recognises that component as a reference to urology, it will not be perceived as being directly descriptive of the goods concerned, but at the very most as being allusive. Consequently, the Board of Appeal was right to find, in paragraph 18 of the contested decision, that the ‘uro’ component constituted an allusive reference to the field of urology.
43 In this regard, it should be recalled that so-called ‘evocative’ trade marks are customary in the medicinal-products sector. References to the field of application and the active ingredients of products are more common in the field of pharmacology (judgment of 14 July 2011, Winzer Pharma v OHIM — Alcon (OFTAL CUSI), T‑160/09, not published, EU:T:2011:379, paragraph 80). The relevant public will understand that preparations and medicines whose name begins with the word element ‘uro’ are intended to treat urinary-tract complaints. Consequently, that public will perceive that component more as a reference to the purpose of the product than as an indication of its commercial origin. The initial component ‘uro’ thus has a low degree of distinctiveness in so far as it alludes to the characteristics of the products in question.
44 As to the additional component ‘akut’ of the trade mark applied for, it must be found that, contrary to what the applicant claims, it cannot be regarded as an allusive reference requiring significant effort to interpret it. For the German-speaking relevant public, that descriptive term, which is generally used in German, means ‘urgent, imminent, acute’.
45 As to the ‘cys’ component of the earlier trade marks, it must be held that it will be understood, at least by the specialist medical and pharmaceutical public, as an allusive reference to the term ‘cystitis’ or the term ‘cysteine’. Thus, the Board of Appeal was also right to confirm, in paragraph 22 of the contested decision, that the earlier trade marks had an average inherent distinctive character and that the overall term ‘urocys’ had no clear descriptive connotations.
46 It follows from the foregoing that for the purposes of the comparison of the signs at issue, the overall signs must be taken into account, including the additional components ‘akut’ of the trade mark applied for and ‘cys’ of the earlier trade marks.
Visual comparison
47 As regards the comparison from a visual point of view, the first point to note is that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, see paragraph 43 and the case-law cited).
48 The Board of Appeal pointed out, in paragraph 18 of the contested decision, that the German-speaking public perceived the signs at issue as a combination of the initial component ‘uro’ and the further element ‘akut’ or ‘cys’. The Board of Appeal adds that that initial component cannot be disregarded, especially given that it is located at the beginning of the signs and significantly influences the overall impression given by them. Despite the differences between the ‘akut’ and ‘cys’ elements with regard to the number of letters and syllables, the Board of Appeal found that, in their overall impression, the signs were identical in terms of their initial component and structure and were of approximately the same length, giving rise to an average degree of visual similarity.
49 The applicant disputes that finding, pointing out that the ‘cys’ component of the earlier trade marks and the ‘akut’ component of the trade mark applied for have no letters in common, and are different in length, number of letters, order of letters and syllable structure. The applicant adds that the Board of Appeal disregarded the ‘semi-figurative’ nature of the earlier trade marks and did not take into consideration the special graphic feature of the capital letter ‘C’ in the middle of the word in the earlier trade marks, which divides the sign ‘urocys’ visually, whereas the term ‘uroakut’ is perceived as homogenous.
50 EUIPO and the intervener challenge the applicant’s arguments.
51 In this regard, it should be recalled that whilst it has previously been held that the first part of a mark tended to have a greater visual impact than the final part (see, to that effect, judgments of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 62, and of 20 November 2017, Stada Arzneimittel v EUIPO — Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 31 and the case-law cited), so that the consumer, in general, pays greater attention to the first part of a mark than to the end (see judgment of 19 May 2011, PJ Hungary v OHIM — Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 77 and the case-law cited), such a consideration cannot be valid in all cases (see judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70 and the case-law cited).
52 In the present case, the mere presence of the common component ‘uro’ does not justify the conclusion that the signs at issue are visually similar (see, to that effect, judgment of 22 February 2018, International Gaming Projects v EUIPO — Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 51).
53 It must, furthermore, be found that there are a certain number of visual differences between the signs at issue. The ‘akut’ component in the trade mark applied for and the ‘cys’ component in the earlier trade marks, being very different to one another, draw particular public attention and are not insignificant for the purposes of the visual comparison of the signs at issue.
54 Firstly, it should be pointed out that the terms ‘akut’ and ‘cys’ do not have any letters in common. Secondly, whereas the ‘akut’ component of the trade mark applied for is longer than the initial component ‘uro’ and makes up four of the seven letters of the term ‘uroakut’, half of the term ‘urocys’ is made up of the ‘uro’ component. Thirdly, the figurative element of the earlier trade marks, consisting of the capital letter ‘C’ in the middle of the word, introduces a visual separation, whereas the term ‘uroakut’ will be perceived as homogenous.
55 Consequently, whilst it should be pointed out that the signs at issue are partly identical, owing to the identical initial component ‘uro’, which the applicant, furthermore, does not dispute, their visual similarity is limited to the presence of that common component. The differences between the signs at issue due to the presence of the additional components ‘akut’ and ‘cys’ contribute, to a not insignificant extent, to the overall impression given by the marks at issue.
56 In light of the foregoing, the Board of Appeal’s finding that the signs at issue, taken as a whole, have an average degree of visual similarity must be upheld.
Aural comparison
57 With regard to the aural comparison, it should be observed that the Board of Appeal relied upon the same considerations as those set out in paragraph 48 above.
58 The applicant maintains that the pronunciation of the earlier trade marks is characterised by the distinctive element ‘cys’, which has nothing in common with the word element ‘akut’. It challenges the assertion that the letter ‘c’ is pronounced like a ‘k’ and emphasises the difference in the number of syllables between the earlier trade marks, consisting of three syllables, and the trade mark applied for, consisting of four syllables, which have significantly different intonations.
59 EUIPO and the intervener challenge the applicant’s arguments.
60 It should be pointed out that the earlier trade marks consist of three syllables, that is ‘u’, ‘ro’ and ‘cys’, whereas the trade mark applied for consists of four syllables, that is ‘u’, ‘ro’, ‘a’ and ‘kut’, so that their length, rhythm and intonation are different and the signs at issue are the same aurally only in terms of their first two syllables. Moreover, the possible pronunciation of the letter ‘c’ of the ‘cys’ component of the earlier trade marks as a sibilant consonant accentuates the aural difference between the signs at issue.
61 On the other hand, it has previously been held that the fact that the number of syllables was different was not sufficient to conclude that there was no phonetic similarity between the signs at issue (see, to that effect, judgment of 19 May 2011, PEPEQUILLO, T‑580/08, EU:T:2011:227, paragraph 79 and the case-law cited). In the present case, the first two syllables, ‘u’ and ‘ro’, of the signs at issue are identical. It is, moreover, not disputed that they are pronounced in the same way.
62 Consequently, taking into account the fact that the signs at issue are aurally identical in terms of the common component ‘uro’, the differences highlighted in paragraph 60 above are not sufficient to prevent the relevant consumer from forming the impression that those marks, assessed globally, have a certain degree of aural similarity.
63 In the present case, the Board of Appeal acknowledged only that there was an average degree of aural similarity between the signs at issue, precisely on the grounds of the difference in the pronunciation of the remaining elements of the trade mark applied for, which finding must, therefore, be upheld.
Conceptual comparison
64 With regard to conceptual similarity, the Board of Appeal found that the relevant public, both the specialist public and the end consumer targeted, would perceive the initial component ‘uro’ as an allusive reference to the fact that the goods concerned are related to the field of urology. The Board of Appeal acknowledged the differences between the ‘akut’ and ‘cys’ components, the first describing that which appears suddenly and progresses rapidly and intensely, and the second capable of being perceived, by the specialist public at least, as an allusive reference to the term ‘cystitis’ or to the term ‘cysteine’. However, although it pointed out, in paragraph 19 of the contested decision, that the signs at issue in their entirety do not have any meaning for the German-speaking general public, the Board of Appeal nevertheless concluded that there was a ‘certain degree of conceptual similarity’ having regard to the identical initial component ‘uro’.
65 The applicant disputes that finding, emphasising the clear conceptual differences between the ‘akut’ component of the trade mark applied for, which, according to the applicant, is an allusive, and not purely descriptive, reference to the fact that the product can be used in particular for illnesses appearing suddenly or developing rapidly and intensely, and the ‘cys’ component of the earlier trade marks, which refers to preparations used on a preventive basis. With regard to the trade mark applied for, the applicant adds that the German-speaking public understands the meaning of the term ‘akut’, unlike the ‘cys’ component, because the average consumer is not familiar with the concepts of ‘cystitis’ or ‘cysteine’.
66 EUIPO and the intervener challenge the applicant’s arguments.
67 In view of the relevant public, the Board of Appeal’s analysis, which, furthermore, is not called into question by the applicant, that the ‘uro’ component, which is common to the signs at issue, is capable of being perceived as a reference to urology must be upheld.
68 It must also be held that the Board of Appeal was right to state, in paragraph 18 of the contested decision, that the ‘cys’ component could be understood, at least by the specialist public, as an allusive reference to the term ‘cystitis’ or to the term ‘cysteine’, which the applicant, furthermore, does not dispute. Similarly, as has already been noted in paragraph 44 above, the word element ‘akut’ of the trade mark applied for is a generally used term in German which means ‘urgent, imminent, acute’.
69 In any event, the signs at issue have a low degree of conceptual similarity as a result of the different meanings conveyed by the additional components ‘akut’ and ‘cys’.
70 In the present case, it should be observed that the Board of Appeal only found that there was a ‘certain degree of conceptual similarity’ for the public concerned, which finding must, therefore, be upheld.
Global assessment of the likelihood of confusion
71 The 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
72 As is apparent from recital 8 of Regulation No 207/2009 (now recital 11 of Regulation 2017/1001), the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the mark, the greater will be the likelihood of confusion and, therefore, marks with a highly distinctive character, either per se or because of the public’s recognition of them, enjoy broader protection than marks with a less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
73 In the present case, after pointing out that the inherent distinctive character of the earlier trade marks should be regarded as average, the Board of Appeal concluded, in paragraph 23 of the contested decision, that there was a likelihood of confusion on the part of the relevant public, including for the specialist public, whose level of attention is high. It based that conclusion on the average degree of visual and aural similarity and a certain degree of conceptual similarity between the signs at issue and on the identical or highly similar nature of the goods in question.
74 The applicant maintains that the mere fact that the descriptive element ‘uro’ is identical does not justify the conclusion that there is a likelihood of confusion, in the absence of other similarities, especially given that there are considerable aural, visual and conceptual differences between the signs at issue.
75 The applicant adds that the purely descriptive character of the ‘uro’ component ‘weakens’ the distinctive character of the earlier trade marks, which reduces the extent of their protection.
76 EUIPO and the intervener challenge the applicant’s arguments.
77 In the present case, it is apparent from the foregoing that, on the one hand, the goods in question falling within Class 5 are identical or highly similar and, on the other, as is apparent from paragraphs 34 to 70 above, the signs at issue, taken as a whole, have a certain degree of visual, aural and conceptual similarity.
78 According to the case-law, in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight and the extent of the similarity or difference between those signs may depend on their inherent qualities (see, to that effect, judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).
79 Furthermore, where the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see, to that effect, judgments of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 85; of 13 July 2012, Caixa Geral de Depósitos v OHIM — Caixa d’Estalvis i Pensions de Barcelona (la Caixa), T‑255/09, not published, EU:T:2012:383, paragraph 79, and of 4 March 2015, FSA v OHIM — Motokit Veículos e Acessórios (FSA K-FORCE), T‑558/13, not published, EU:T:2015:135, paragraphs 49 to 52).
80 In the present case, it should be recalled that it has already been found in paragraph 43 above that the initial component ‘uro’, which is common to the signs at issue, had a weak distinctive character.
81 Moreover, as is apparent, inter alia, from paragraphs 53, 60 and 69 above, the visual, aural and conceptual differences relating to the additional components ‘akut’ and ‘cys’ of the signs at issue are not insignificant in the overall impression of the signs for the relevant public, but offset the visual, aural and conceptual similarities, which arise purely from the presence of the common component ‘uro’ and the idea to which it refers, especially given that the relevant public will display an increased level of attention.
82 It must, therefore, be concluded that the signs at issue are globally different in their overall impression for the relevant public, so that the Board of Appeal was wrong to conclude that there was a likelihood of confusion on the part of the relevant public with regard to the Class 5 goods covered by the signs at issue.
83 It follows from all the foregoing considerations that the contested decision must be annulled.
Claim for alteration
84 With regard to the applicant’s head of claim seeking to have the contested decision amended and the opposition rejected, it should be pointed out that, by that head of claim, the applicant asks the Court, in essence, to adopt the decision which, according to the applicant, EUIPO should have taken, that is a decision finding that the conditions for upholding the opposition brought by the intervener are not satisfied. Consequently, the applicant asks the Court to exercise its power to alter decisions, as provided for in Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001).
85 Moreover, it should be recalled that the power of the General Court to alter decisions, under Article 65(3) of Regulation No 207/2009, does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must, therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
86 In the present case, the conditions for the exercise of the Court’s power to alter decisions are met. It follows from the considerations set out in paragraphs 21 to 83 above that the Board of Appeal was required to find that, contrary to what the Opposition Division had held, there was no likelihood of confusion in the present case. Consequently, the opposition must be rejected.
Costs
87 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party shall be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
88 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and those incurred by the applicant, in accordance with the form of order sought by the applicant.
89 Pursuant to Article 138(3) of the Rules of Procedure, the intervener will bear its own costs.
90 Moreover, the applicant has applied for EUIPO to be ordered to pay the costs which the applicant incurred in the proceedings before the Board of Appeal. In this regard, it should be recalled that, pursuant to Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal shall be regarded as recoverable costs, so that the applicant’s claim is admissible.
91 The same does not apply, however, to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, the applicant’s claim in respect of costs relating to the proceedings before the Opposition Division, which do not constitute recoverable costs, is inadmissible.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 March 2017 (Case R 1221/2016-4);
2. Rejects the opposition brought by Dermapharm GmbH;
3. Orders EUIPO to bear its own costs and the costs incurred by Kwizda Holding GmbH, including the costs incurred in the proceedings before the Board of Appeal;
4. Orders Dermapharm to bear its own costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 20 September 2018.
[Signatures]
* Language of the case: German.
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