Boehringer Ingelheim Pharma v OHMI - Nepentes Pharma (Momarid) (Judgment) [2014] EUECJ T-75/13 (02 December 2014)

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(Community trade mark — Opposition proceedings — Application for the Community word mark Momarid — Earlier Community word mark LONARID — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Relevant public — Obligation to state reasons — Article 75 of Regulation No 207/2009)

Boehringer Ingelheim Pharma GmbH & Co. KG, established in Ingelheim (Germany), represented initially by V. von Bomhard and D. Slopek, and subsequently by V. von Bomhard, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Nepentes Pharma sp. z o.o., established in Warsaw (Poland), represented by C. Bercial Arias, K. Dimidjian-Lecompte and C. Casalonga, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 28 November 2012 (Case R 2292/2011-4), relating to opposition proceedings between Boehringer Ingelheim Pharma GmbH & Co. KG and Nepentes S.A.,

composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 8 February 2013,

having regard to the response of OHIM lodged at the Court Registry on 17 May 2013,

having regard to the response of the intervener lodged at the Court Registry on 13 May 2013,

1 On 9 June 2010, Nepentes S.A. filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in, inter alia, 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. They correspond, for that class, to the following description: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides; pharmaceutical and medical preparations, substances and products for protecting, maintaining, treating or conditioning for the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical preparations and substances for the care and appearance of the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical products and preparations for slimming purposes; medicinal products; pharmaceutical products; pharmaceutical and medicinal preparations and substances; dermatological pharmaceutical products, preparations and substances; dermatological preparations for the prevention and treatment of skin disorders; dermatological preparations (medicated); pharmaceutical preparations for the treatment of dermatological disorders; pharmaceutical preparations for the topical treatment of dermatological disorders; dermatological medicinal products; veterinary pharmaceutical preparations for dermatological use; veterinary medicinal products for treatment of hormonal disorders; hormones for medical purposes; hormone preparations for veterinary use; hormones; steroid products, hormone preparations for pharmaceutical and medical use; hygiene products and preparations for medical purposes; topical pharmaceutical compositions; chemical preparations for medical purposes; chemicals for pharmaceutical use’.

4 The trade mark application was published in Community Trade Marks Bulletin No 146/2010 of 9 August 2010.

5 On 27 October 2010, the applicant, Boehringer Ingelheim Pharma GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of all the goods referred to in paragraph 3 above, with the exception of ‘food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides’.

6 The opposition was based on the earlier Community word mark LONARID, registered on 19 May 2005 under the number 2396448 in respect of goods in Class 5 corresponding to the following description: ‘Pharmaceutical and sanitary preparations’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 On 28 January 2011, Nepentes S.A. requested proof of genuine use of the earlier mark on which the opposition was based. The Opposition Division thus invited the applicant, pursuant to Article 42(2) and (3) of Regulation No 207/2009, to furnish that proof.

9 The applicant submitted, within the period given, documents by which it sought to demonstrate genuine use of the earlier mark in Belgium, Greece, Italy and Luxembourg.

10 On 14 September 2011, the Opposition Division found that the applicant had demonstrated genuine use of the earlier mark only in connection with ‘pharmaceutical preparations’. Following an assessment of the likelihood of confusion with regard to the pharmaceutical preparations thus covered by the earlier mark, it upheld the opposition and rejected the application for registration of the mark applied for in respect of all the goods subject to the opposition.

11 On 7 November 2011, Nepentes S.A. filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12 By decision of 28 November 2012, corrected on 20 March 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM partially annulled the Opposition Division’s decision.

13 In particular, the Board of Appeal found that, in the light of the evidence of genuine use of the earlier mark provided by the applicant, that mark had to be deemed to be protected for ‘pharmaceutical preparations for the reduction of pain and fever’.

14 Next, as regards the assessment of the likelihood of confusion, first, it considered the level of attention of the relevant public to be above average. Secondly, it found that the ‘pharmaceutical and veterinary preparations; medicinal products; pharmaceutical products; pharmaceutical and medicinal preparations and substances; topical pharmaceutical compositions; preparations for medical purposes; chemical preparations for medical purposes’ were identical to the goods covered by the earlier mark. In addition, it found that the ‘chemicals for pharmaceutical use’ covered by the mark applied for were dissimilar to the goods covered by the earlier mark. Furthermore, it found that the other goods, covered by the mark applied for and subject to the opposition, were similar to a low degree to the goods covered by the earlier mark. Thirdly, it took the view that the degree of visual and phonetic similarity between the signs at issue was slightly above average.

15 Lastly, it decided that there was a likelihood of confusion as regards the identical goods. By contrast, it ruled out the existence of a likelihood of confusion in respect of the goods which were similar to a low degree or dissimilar.

16 On 3 May 2013, OHIM registered the transfer, by Nepentes S.A., of the application for the Community word mark Momarid to the intervener, Nepentes Pharma sp. z o.o.

– annul the contested decision in so far as it authorised the registration of the mark Momarid in respect of ‘sanitary preparations for medical purposes; dietetic substances adapted for medical use; pharmaceutical and medical preparations, substances and products for protecting, maintaining, treating or conditioning for the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical preparations and substances for the care and appearance of the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical products and preparations for slimming purposes; dermatological pharmaceutical products, preparations and substances; dermatological preparations for the prevention and treatment of skin disorders; dermatological preparations (medicated); pharmaceutical preparations for the treatment of dermatological disorders; pharmaceutical preparations for the topical treatment of dermatological disorders; dermatological medicinal products; veterinary pharmaceutical preparations for dermatological use; veterinary medicinal products for treatment of hormonal disorders; hormones for medical purposes; hormone preparations for veterinary use; hormones; steroid products, hormone preparations for pharmaceutical and medical use; hygiene products; chemicals for pharmaceutical use’;

19 In support of its action, the applicant relies on two pleas in law, the first of which alleges infringement of Article 75 of Regulation No 207/2009 and the second of which alleges infringement of Article 8(1)(b) of that regulation.

20 In the contested decision, the Board of Appeal took the view that the goods at issue were aimed at professionals in the medical sector and at the general public. Furthermore, it stated that, although pharmaceutical preparations for the reduction of pain and fever are available without prescription in pharmacies, and even in para-pharmacies, the level of attention had to be considered to be above average. Lastly, it stated that the relevant territory was the European Union.

21 The applicant submits that the contested decision is vitiated by a failure to state reasons inasmuch as it does not provide any reason explaining why the level of attention of the relevant public is deemed to be above average.

22 It must be borne in mind that the first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM are to state the reasons on which they are based. According to the case-law, that duty has the same scope as that laid down in Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, secondly, to enable the Courts of the European Union to review the legality of the decision (see judgment of 28 April 2004 in Sunrider v OHIM — Vitakraft-Werke Wührmann (VITATASTE and METABALANCE 44), T‑124/02 and T‑156/02, ECR, EU:T:2004:116, paragraphs 72 and 73 and the case-law cited). It is apparent from the same case-law that the question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgment in VITATASTE and METABALANCE 44, EU:T:2004:116, paragraph 73 and the case-law cited). The Boards of Appeal cannot, however, be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 55).

23 It must be pointed out at the outset that it was in response to the arguments put forward by the applicant relating to the level of attention of end consumers that the Board of Appeal stated that the level of attention had to be considered to be above average although pain- and fever-reducing medication is available without prescription in pharmacies and even in para-pharmacies.

24 As for the rest, it is true that the Board of Appeal did not, in paragraphs 16 to 18 of the contested decision, state the reasons why the level of attention had to be considered to be above average. However, it must be pointed out that, in paragraph 22 of the contested decision, at the stage of the comparison of the goods at issue, the Board of Appeal stated that all of those goods were part of the wide field of health care. Furthermore, in paragraph 32 of the contested decision, the Board of Appeal, at the stage of the global assessment of the likelihood of confusion, stated that the level of attention of consumers was enhanced due to the goods at issue.

25 Consequently, in spite of the brevity of the Board of Appeal’s statement of reasons in that regard, the applicant was, in view of the wording of the contested decision, in a position to understand that the level of attention was above average on the ground that all of the goods at issue related to the health of the end consumers.

26 It follows that the statement of reasons for the contested decision was sufficient to enable the applicant to dispute the merits of such an assessment, which it has, moreover, done. The first plea put forward by the applicant, alleging infringement of the first sentence of Article 75 of Regulation No 207/2009, must therefore be rejected.

27 As regards the other arguments put forward by the applicant, it must be pointed out that they relate to the substantive assessment carried out by the Board of Appeal inasmuch as they allege that the Board of Appeal erred in so far as it did not distinguish between the level of attention of professionals and that of end consumers and in so far as it did not take some of the disputed goods, such as dietetic substances adapted for medical use, into account in assessing the level of attention of the relevant public. Those arguments must therefore be examined in the context of the second plea put forward by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

28 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, 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.

29 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 case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

30 It is in the light of the abovementioned principles that the present plea must be examined.

31 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

32 It should be noted at the outset that, in the light of the evidence of genuine use of the earlier mark provided by the applicant, the Board of Appeal found, in paragraph 14 of the contested decision, that that mark had to be deemed to be protected for ‘pharmaceutical preparations for the reduction of pain and fever’ (see paragraph 13 above). It must also be pointed out that the Board of Appeal defined the relevant territory as the European Union and stated that the goods at issue were aimed at professionals in the medical sector and at the general public. The applicant does not dispute those assessments which are, in any event, correct.

33 By contrast, the applicant submits that, contrary to the level of attention which the relevant public was found to have in the contested decision, namely an above average level of attention, the level of attention of that public must be regarded as low.

35 In that regard, in the first place, it is necessary to dismiss the applicant’s argument alleging that the Board of Appeal erred inasmuch as it did not distinguish between the level of attention of professionals and that of end consumers and inasmuch as it did not assess the likelihood of confusion in the light of the level of attention of end consumers which is lower than that of health professionals.

36 It must be pointed out that, before the Board of Appeal, the applicant did not dispute the heightened level of attention of professionals. By contrast, it submitted that the level of attention of end consumers of preparations for the reduction of pain and fever, such as those covered by the earlier mark, was lower than that of professionals.

37 Accordingly, in the contested decision, the Board of Appeal responded to the arguments put forward by the applicant and found that, although pharmaceutical preparations for the reduction of pain and fever are available without prescription in pharmacies, and even in para-pharmacies, the level of attention had to be considered to be above average.

38 It follows that the Board of Appeal assessed the level of attention of professionals and the level of attention of the general public, which consists of end consumers. Furthermore, it is apparent from the contested decision that, when it had analysed the level of attention of end consumers, which the applicant claimed was lower than that of professionals, the Board of Appeal reached the conclusion that that level of attention had to be considered to be above average.

39 Consequently, it cannot be maintained that the Board of Appeal did not distinguish between the levels of attention of the two components of the relevant public and it must be held that, by its arguments, the applicant is in reality disputing the level of attention which the Board of Appeal found end consumers to have.

40 In the second place, contrary to what the applicant submits, the level of attention of end consumers who purchase pharmaceutical preparations for the reduction of pain and fever such as those covered by the earlier mark cannot be considered to be low.

41 As appears from the case-law, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to end consumers, it is also 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 concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree 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 degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (see judgment of 7 June 2012 in Meda Pharma v OHIM — Nycomed (ALLERNIL), T‑492/09 and T‑147/10, EU:T:2012:281, paragraph 29 and the case-law cited).

42 Furthermore, still in line with the case-law, those considerations are also applicable if the pharmaceutical products in question are painkillers which are issued without a prescription (see, to that effect, judgment of 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraphs 25 and 26).

43 Consequently, the Board of Appeal was right to find, in the contested decision, that the level of attention of end consumers who purchase pharmaceutical preparations for the reduction of pain and fever was above average.

44 The foregoing considerations are not called into question, first, by the decision-making practice of OHIM relied on by the applicant and, secondly, by OHIM’s guidelines which, according to the applicant, acknowledge the well-known fact that painkillers are medicines for mild disorders.

45 First, it is apparent from the case-law that the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77).

46 Secondly, it must be borne in mind that OHIM’s guidelines, which are published on its website, are no more than a consolidated set of rules setting out the line of conduct which OHIM itself proposes to adopt (judgment of 12 March 2014 in Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, EU:T:2014:119, paragraph 44).

47 Consequently, since it has been held that the Board of Appeal was right to find that the level of attention of end consumers who purchase pharmaceutical preparations for the reduction of pain and fever is above average, the applicant may not reasonably rely, for the purposes of casting doubt on that conclusion, on OHIM’s previous decisions or guidelines.

48 In the third place, the applicant submits that the Board of Appeal should have taken into account the lower level of attention given to dietetic preparations. It refers, in that regard, to the judgment of 9 December 2009 in Longevity Health Products v OHIM — Merck (Kids Vits), T‑484/08, EU:T:2009:486.

49 However, the Court has held that dietetic products in general may be regarded as products to which consumers who are reasonably well‑informed and reasonably observant and circumspect pay a high degree of attention (see, to that effect, judgment of 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 28).

50 Furthermore, the Court has also held, as regards dietary supplements adapted for medical use, that the degree of attention which the relevant public displays in respect of those goods is high (see, to that effect, judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 21) or above average (see, to that effect, judgment of 29 February 2012 in Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, EU:T:2012:95, paragraph 76).

51 Consequently, in so far as the trade mark application covered ‘dietetic substances adapted for medical use’ and in the light of the case-law referred to in paragraphs 49 and 50 above, the applicant’s argument that the Board of Appeal should have taken into account the lower level of attention given to dietetic preparations must be rejected.

52 In view of the foregoing, the Board of Appeal did not make an error of assessment when it decided that the relevant public’s level of attention was likely to be above average.

53 According to settled case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

54 In the first place, the applicant submits that the Board of Appeal erred in finding that ‘sanitary preparations for medical purposes; dietetic substances adapted for medical use; pharmaceutical and medical preparations, substances and products for protecting, maintaining, treating or conditioning for the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical preparations and substances for the care and appearance of the skin, body, face, mouth, lips, eyes, hair, hands and nails; pharmaceutical and medical products and preparations for slimming purposes; dermatological pharmaceutical products, preparations and substances; dermatological preparations for the prevention and treatment of skin disorders; dermatological preparations (medicated); pharmaceutical preparations for the treatment of dermatological disorders; pharmaceutical preparations for the topical treatment of dermatological disorders; dermatological medicinal products; veterinary pharmaceutical preparations for dermatological use; veterinary medicinal products for treatment of hormonal disorders; hormones for medical purposes; hormone preparations for veterinary use; hormones; steroid products, hormone preparations for pharmaceutical and medical use; hygiene products’ were similar to a low degree to the goods covered by the earlier mark. The applicant claims that there is a high degree of similarity between the goods in question or, at the very least, an average degree of similarity as regards veterinary products.

55 First, it must be stated that, as pointed out by the applicant, in paragraph 22 of the contested decision the Board of Appeal found that the goods which are covered by the mark applied for and are referred to in paragraph 54 were either dermatological or hormone preparations or dietetic or sanitary products.

56 Secondly, in the context of an overall analysis, the Board of Appeal found that the nature and method of use of all the goods referred to in paragraph 54 above differed considerably from those of the applicant’s goods. Furthermore, it stated that the intended purpose of those goods was different.

58 First, dermatological or hormone preparations are similar to the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark inasmuch as, as the applicant correctly submits, those goods are of the same nature (pharmaceutical preparations), have the same purpose or intended purpose (the treatment of human health problems), are aimed at the same consumers (professionals in the medical sector and patients) and use the same distribution channels (as a general rule, pharmacies).

59 Secondly, as regards ‘dietetic substances adapted for medical use’, ‘pharmaceutical and medical products and preparations for slimming purposes’ and ‘sanitary preparations for medical purposes’, although their natures are not necessarily the same, those goods have the same purpose or intended purpose (the treatment of human health problems), are aimed at the same consumers (professionals in the medical sector and patients) and use the same distribution channels (as a general rule, pharmacies) as pharmaceutical preparations for the reduction of pain and fever. An identical assessment must be made as regards the ‘hygiene products’ referred to in the contested decision inasmuch as, as is apparent from the trade mark application, and as OHIM and the intervener confirmed at the hearing, the goods referred to in the present case are necessarily hygiene products ‘for medical purposes’.

60 Lastly, as regards ‘veterinary pharmaceutical preparations for dermatological use’, ‘veterinary medicinal products for treatment of hormonal disorders’ and ‘hormone preparations for veterinary use’, the mere fact that those veterinary preparations are intended for use on animals does not make it possible to rule out the existence of a similarity between the goods in question (see, to that effect, judgment of 16 September 2013 in Rovi Pharmaceuticals v OHIM — Laboratorios Farmacéuticos Rovi (ROVI Pharmaceuticals), T‑97/11, EU:T:2013:474, paragraphs 58 to 60).

61 However, the error pointed out in paragraphs 56 to 60 above has no effect on the conclusion which the Board of Appeal reached. It was right in pointing out that the therapeutic indications of the goods at issue were different and that the goods which have been referred to in paragraph 54 above and are covered by the mark applied for had to be considered to be similar to a low degree to the goods covered by the earlier mark.

62 In that regard, it must first be pointed out that the applicant is not justified in complaining that the Board of Appeal did not explain the reason why there is a clear difference between the therapeutic indications of dermatological pharmaceutical preparations, substances and products and the therapeutic indication of the goods covered by the earlier mark. It is evident that the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark have a therapeutic indication that is different from the therapeutic indications of the dermatological pharmaceutical preparations, substances and products covered by the mark applied for which make it possible, inter alia, to prevent and treat skin diseases. The applicant’s argument alleging that the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark provide relief inter alia from specific symptoms of dermatological disorders such as painful itching is not sufficiently substantiated in that regard. In any event, such an argument cannot be sufficient to conclude that the goods in question are substitutable since their primary therapeutic indications are different (see, to that effect, judgment in TOLPOSAN, cited in paragraph 42 above, EU:T:2010:520, paragraphs 38 and 39).

63 Secondly, it is also evident that hormone preparations are distinguished, by their therapeutic indications, from the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark. The fact, relied upon by the applicant, that the pharmaceutical preparations painkillers may supplement or replace the use of hormone preparations cannot be regarded as well-known. In any event, such a fact cannot be sufficient to conclude that the goods in question are substitutable or complementary (see, to that effect, judgment in TOLPOSAN, cited in paragraph 42 above, EU:T:2010:520, paragraphs 38 to 41).

64 Furthermore, the dietetic substances adapted for medical use covered by the mark applied for have a specific intended purpose which is different from that of the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark. Dietetic substances adapted for medical use are consumed by persons who are following a particular diet. The mark applied for also covers pharmaceutical and medical products and preparations which are consumed specifically ‘for slimming purposes’.

65 Lastly, the ‘sanitary preparations for medical purposes’ and the ‘hygiene products’ for medical purposes covered by the mark applied for are, inter alia, used for sterilising and disinfecting and thus have a specific intended purpose which is different from that of the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark.

66 Consequently, in the context of a global analysis, it must be held that the similarities prevail over the differences and that the goods at issue must be regarded as similar. However, in view of the differences relating to the therapeutic indications or the specific intended purposes of those goods, which have been pointed out in paragraphs 62 to 65 above, the Board of Appeal was justified in concluding that the degree of similarity between them was low (see, to that effect, judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraph 35, and judgment in TOLPOSAN, cited in paragraph 42 above, EU:T:2010:520, paragraph 42).

67 That finding cannot be called into question by the judgments of the General Court on which the applicant relies since those judgments were delivered in view of specific situations which were different from that in the present case.

68 Thus, for example, in the judgment in TRUBION, cited in paragraph 49 above, EU:T:2009:507, the General Court ruled on a Board of Appeal’s comparison of, on the one hand, pharmaceutical preparations and pharmaceutical preparations for use in the fields of immunology and oncology and, on the other hand, dietetic preparations for medical use.

69 Furthermore, in the judgment of 11 November 2009 in Bayer Healthcare v OHIM — Uriach-Aquilea OTC (CITRACAL), T‑277/08, EU:T:2009:433, the General Court assessed the merits of a Board of Appeal’s comparison of ‘dietary supplements, including dietary supplements inclusive of calcium salt’ and ‘healing salves’.

70 Lastly, in the judgment of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, and the judgment of 15 March 2012 in Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, EU:T:2012:124, the General Court was led to compare broadly defined groups of goods. It was thus in those specific circumstances that it held that there was a relatively high degree of similarity between those groups of goods.

71 Consequently, the applicant is not justified in claiming that there is a high degree of similarity between the goods in question or, at the very least, an average degree of similarity as regards veterinary products. The Board of Appeal was therefore right in finding that there was a low degree of similarity between the goods referred to in paragraph 54 above and the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark.

72 In the second place, the applicant claims that the Board of Appeal erred in deciding that the ‘chemicals for pharmaceutical use’ covered by the mark applied for were dissimilar to the goods covered by the earlier mark.

73 In the contested decision, the Board of Appeal found that those goods were not aimed at end consumers as were the applicant’s goods, on the ground that they were aimed at pharmacists or laboratories which use the goods for further processing into finished products.

74 However, as is apparent from that decision and as OHIM confirmed in its response, the Board of Appeal took the view that the relevant public in respect of all of the goods at issue consisted of professionals in the medical sector and of the general public.

75 That latter assessment is incompatible with the analysis which the Board of Appeal carried out in paragraph 23 of the contested decision, according to which the ‘chemicals for pharmaceutical use’ covered by the mark applied for are aimed solely at pharmacists or laboratories, which use them for further processing into finished products.

76 Furthermore, it must be pointed out that the expression ‘chemicals for pharmaceutical use’ is, as OHIM admits in its response, rather vague and may lead to different interpretations. That expression is therefore too imprecise to deduce from it, as the Board of Appeal did in the contested decision, first, that the goods thus designated are solely raw materials which are included in the composition of medicines and not finished goods and, secondly, that those goods are aimed only at pharmacists or laboratories and not at end consumers.

77 It must therefore be held that the ‘chemicals for pharmaceutical use’ covered by the mark applied for may fall within the category of pharmaceutical preparations. Furthermore, inasmuch as the pharmaceutical preparations for the reduction of pain and fever covered by the earlier mark are included in the broader category of ‘chemicals for pharmaceutical use’, those goods may be regarded as identical.

78 Consequently, the Board of Appeal erred in finding that the ‘chemicals for pharmaceutical use’ covered by the mark applied for were dissimilar to the goods covered by the earlier mark.

79 The global assessment of the likelihood of confusion must, as far as the visual, phonetic or conceptual similarity of the signs in question is concerned, 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 the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

80 The applicant submits that the signs at issue are highly similar and that the Board of Appeal of OHIM erred in finding that the visual and phonetic similarities of the signs compared were slightly above average.

81 In the first place, as regards the visual comparison of the signs at issue, it must be pointed out that those signs are word signs consisting of a single word. Each of the words consists of seven letters and the same number of syllables, ‘lo’, ‘na’, ‘rid’ and ‘mo’, ‘ma’, ‘rid’ respectively. Five of the seven letters of which the signs consist are identical and appear in the same order. Furthermore, the two words share the same sequence of vowels, namely ‘o’, ‘a’ and ‘i’. Lastly, as the Board of Appeal pointed out, the letters ‘m’ and ‘n’ are quite similar visually. In that regard, the Court has, moreover, already held that those two letters look rather alike (see, to that effect, judgment of 16 June 2010 in Kureha v OHIM — Sanofi‑Aventis (KREMEZIN), T‑487/08, EU:T:2010:237, paragraph 83).

82 In addition, it must be pointed out that the first and third letters of the signs at issue differ and that the first component of word marks may be more likely to catch the consumer’s attention than the components which follow (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and judgment of 16 March 2005 in L'Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65).

83 It cannot, however, be inferred from this that, in the present case, the difference between the first letter of the signs at issue, namely ‘m’ instead of ‘l’ can prevent those signs from being similar.

84 Consequently, as a result of an overall assessment, it must be held that the elements of similarity between the signs at issue prevail over the elements of dissimilarity and that the Board of Appeal was right in finding that the degree of visual similarity between them was slightly above average.

85 That finding is not called into question by the intervener’s argument that the suffix ‘rid’ has a low degree of distinctiveness. As the Board of Appeal correctly pointed out, the mere fact that a number of marks containing that sequence of letters are registered with OHIM for goods in Class 5 does not prove that they are used on the market.

86 In the second place, as regards the phonetic comparison of the signs at issue, it must be pointed out, first, that those signs are characterised by the same number of letters, the same number of syllables, the same vowel sequence ‘o’, ‘a’ and ‘i’ and the same final syllable ‘rid’. It must also be added that the signs share the same final sound ‘arid’ and that their third letters ‘m’ and ‘n’ have in common a nasal sound which is not easily distinguished.

87 Secondly, as the Board of Appeal pointed out, the signs at issue differ in their first and third consonants. It is true that the sound of their first letter, ‘m’ and ‘l’ respectively, is different. However, the differences in the pronunciation of the initial letters in question are not sufficient to cancel out the similarity arising from the fact that the greater parts of the signs at issue, in terms of numbers of letters, have been found to be identical.

88 Consequently, it must be held, following an overall phonetic assessment, that the elements of similarity between the signs at issue prevail over the elements of dissimilarity and that the Board of Appeal was right in finding that the degree of phonetic similarity between the signs was slightly above average.

89 In the light of the foregoing, the Board of Appeal was right in finding that the degree of visual and phonetic similarity between the signs at issue was slightly above average. As regards the conceptual comparison of the signs at issue, the Board of Appeal was right in finding that it was neutral on account of the fact that the signs have no meaning, which the applicant does not, moreover, dispute.

90 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 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 (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006 in Mast‑Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

91 The applicant submits that there is a likelihood of confusion between the earlier mark and the mark applied for on the grounds, first, that the level of attention of the consumers is quite low, secondly, that the goods are identical or to large extent highly similar and, thirdly, that the signs at issue are highly similar.

92 It has, however, been held above that the level of attention of the relevant public is above average. Furthermore, with the exception of ‘chemicals for pharmaceutical use’, the goods at issue are similar to a low degree and the degree of visual and phonetic similarity between the signs at issue is slightly above average, the conceptual comparison between them not being relevant. Furthermore, it is not disputed that the distinctiveness of the earlier mark is average.

93 In those circumstances, and taking a global approach, it must be held that the similarities between the signs are not sufficient to conclude that there is a likelihood of confusion as regards the goods referred to in paragraph 54 above which are similar to a low degree. That is a fortiori true because the level of attention of the relevant public vis-à-vis those goods is above average.

94 The Board of Appeal was therefore right in finding that there was no likelihood of confusion between the marks at issue in respect of the goods which were considered to be similar to a low degree.

95 As regards the ‘chemicals for pharmaceutical use’, it must be borne in mind that, as is apparent from paragraphs 72 to 78 above, the Board of Appeal erred in finding that those goods were dissimilar to those covered by the earlier mark.

96 Consequently, the Board of Appeal erred in ruling out the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, as regards those goods and the contested decision must be annulled in that regard.

97 Under Article 87(3) of its Rules of Procedure, the General Court may order that the costs be shared or that each party bear its own costs where each party succeeds on some and fails on other heads.

98 In the circumstances of the present case, each party must be ordered to bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 November 2012 (Case R 2292/2011-4) as regards ‘chemicals for pharmaceutical use’;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Boehringer Ingelheim Pharma v OHMI - Nepentes Pharma (Momarid) (Judgment) [2014] EUECJ T-75/13 (02 December 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T7513.html Cite as: ECLI:EU:T:2014:1017, EU:T:2014:1017, [2014] EUECJ T-75/13

Court of Justice of the European Communities (including Court of First Instance Decisions)