Forest Pharma v EUIPO - Ipsen Pharma (COLINEB) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-36/17 (05 October 2017)

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(EU trade mark — Opposition proceedings — Application for EU word mark COLINEB — Earlier national figurative mark Colina — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Extent of the examination to be carried out by the Board of Appeal — Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation (EU) 2017/1001))

Forest Pharma BV, established in Amsterdam (Netherlands), represented by T. Holman, Solicitor,

European Union Intellectual Property Office (EUIPO), represented by P. Sipos, acting as Agent,

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

Ipsen Pharma SAS, established in Boulogne-Billancourt (France), represented by E. Baud, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 October 2016 (Case R 500/2016-5), relating to opposition proceedings between Ipsen Pharma and Forest Pharma,

composed of I. Pelikánová (Rapporteur), President, P. Nihoul and J. Svenningsen, Judges,

having regard to the application lodged at the Court Registry on 23 January 2017,

having regard to the response of EUIPO lodged at the Court Registry on 5 April 2017,

having regard to the response of the intervener lodged at the Registry of the Court on 10 April 2017,

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,

1 On 21 August 2014, the applicant, Forest Pharma BV, 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) (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).

3 The goods in respect of which registration was sought are in Classes 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 to the following description:

– Class 5: ‘Pharmaceutical and veterinary preparations; antibiotic preparations’;

– Class 10: ‘Medical apparatus and instruments for dispensing medicine, medical devices for use with respiratory apparatus, inhalers, nebulisers and nasal sprays, aerosol dispensers for medical purposes, vaporisers for medical purposes’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 187/2014 of 6 October 2014.

5 On 6 January 2015, the intervener, Ipsen Pharma SAS, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of all the goods referred to in the application for registration.

6 The opposition was based on the German figurative mark, filed on 22 December 1924 and registered on 18 September 1925 under number 338874, for ‘Medicinal products, chemical products for medical and hygienic purposes, pharmaceutical drugs and products’, falling within Class 5, reproduced below:

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 At the applicant’s request, the intervener was asked by EUIPO to furnish proof, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), of genuine use of the earlier German mark in the relevant territory during the five years preceding publication of the EU trade mark application.

9 By decision of 9 March 2016, the Opposition Division held that proof of use of the earlier mark had been furnished only for part of the goods covered by that mark, namely, ‘Pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, in Class 5. It held that there was a likelihood of confusion and upheld the opposition for all the contested goods.

10 On 15 March 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 Decision.

11 By decision of 13 October 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, the Board of Appeal noted that the parties did not dispute that the earlier mark had been put to genuine use in Germany during the relevant period in respect of part of the goods for which it was registered, namely, ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, in Class 5. Next, taking into account that the earlier mark was a German registration and that the goods in question were medical devices and pharmaceutical products, it found that the relevant public consisted of medical professionals and end users in Germany with a high degree of attention. It held, first, that the goods covered by the mark applied for in Class 5 and the goods covered by the earlier mark were identical and, secondly, that the goods covered by the mark applied for in Class 10 and the goods covered by the earlier mark were similar to a low degree. Finding that the signs at issue were similar and that the earlier mark enjoyed a normal degree of distinctiveness, it held that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

15 In support of its action, the applicant puts forward three pleas alleging, first, infringement of Article 15(1) of Regulation No 207/2009 (now Article 18(1) of Regulation 2017/1001) and of Article 42(2) and (3) of that regulation, secondly, infringement of Article 76(1) of that regulation (now Article 95(1) of Regulation 2017/1001) and, thirdly, infringement of Article 8(1)(b) of that regulation.

The first plea in law, alleging infringement of Article 15(1) and Article 42(2) and (3) of Regulation No 207/2009

16 As its principal argument, the applicant disputes that the intervener proved genuine use of the earlier mark, inasmuch as the evidence produced demonstrated not use of the mark as registered, but use in a form which altered its distinctive character, within the meaning of Article 15(1) of Regulation No 207/2009. In the alternative, it maintains that if genuine use of the earlier mark must be regarded as proved, that is in respect only of ‘pharmaceutical drugs and products for the treatment of disorders of the bowel or diarrhoea in humans’.

17 EUIPO and the intervener argue that that plea is inadmissible, the question of the genuine use of the earlier mark not being the subject matter of the proceedings before the Board of Appeal.

18 It should be noted that the purpose of the action before the General Court is to obtain a review of the legality of the decision of the Board of Appeal of EUIPO. Consequently, the Court’s review may not go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 12 March 2014, El Corte Inglés v OHIM — Technisynthese (BTS), T‑592/10, not published, EU:T:2014:117, paragraph 19 and the case-law cited).

19 It is apparent from Article 76(1) of Regulation No 207/2009 that in proceedings relating to the relative grounds for refusal of registration, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. It must be determined, therefore, whether the issue of genuine use of the earlier mark arose within the context of the dispute brought before the Board of Appeal.

20 In accordance with settled case-law, a request for proof of genuine use of the earlier mark adds to the opposition proceedings the specific and preliminary question of genuine use of the earlier mark which, once raised by the applicant for the trade mark, must be settled before a decision is given on the opposition proper (see judgments of 13 September 2010, Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraphs 31 and 32 and the case-law cited, and of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 35 and the case-law cited).

21 Where the question of the genuine use of the earlier mark, within the meaning of Article 42(2) of Regulation No 207/2009, is not raised specifically before the Board of Appeal, it does not constitute a question of law which must necessarily be examined by the latter in order for the dispute before it to be settled and, consequently, it must not be regarded as the subject matter of the proceedings before the Board of Appeal (see judgment of 12 March 2014, BTS, T‑592/10, not published, EU:T:2014:117, paragraph 21 and the case-law cited).

22 It follows that the issue of genuine use is specific and preliminary in character, since it leads to a determination whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question. That issue, therefore, does not fall within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark (judgment of 13 September 2010, OFTEN, T‑292/08, EU:T:2010:399, paragraph 33).

23 Thus, where the Opposition Division concludes that proof of genuine use of the earlier mark has been provided and, accordingly, upholds the opposition, the Board of Appeal may examine the question of that proof only if the applicant for the mark raises it specifically in its appeal before that Board (see judgment of 14 December 2011, VÖLKL, T‑504/09, EU:T:2011:739, paragraph 36 and the case-law cited).

24 In the present case, it should be noted that during the proceedings before EUIPO the applicant did not put forward any argument to challenge the evidence of genuine use of the earlier mark provided by the intervener either before the Opposition Division or before the Board of Appeal. In that regard, the Board of Appeal stated, in the contested decision, that the finding of the Opposition Division in respect of genuine use of the earlier mark ‘[was] common ground [and was] not contested by the parties’. Before the Board of Appeal, the applicant merely challenged the assessment of the Opposition Division concerning the existence of a likelihood of confusion.

25 Therefore, it must be held that the question of genuine use of the earlier mark was not the subject matter of the proceedings before the Board of Appeal and examination of that question by the Court would go beyond the factual and legal context of the dispute as it was brought before the Board.

The second plea, alleging infringement of Article 76(1) of Regulation No 207/2009

27 In the first place, the applicant argues that the finding made by the Board of Appeal in paragraph 31 of the contested decision, that ‘it is not unusual that gastric conditions are also linked to respiratory disorders, such as chronic acid reflux that inflames the bronchial passages causing shortness of breath’ and that ‘in such a condition it is necessary to simultaneously treat both the stomach acid and the bronchial inflammation in such patients’, is not based on the evidence or the pleas relied on by the parties. The applicant states that it has not had the opportunity to dispute that finding, made for the first time in the contested decision.

28 Under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, EUIPO’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.

29 According to settled case-law, that provision relates, inter alia, to the factual basis of decisions of EUIPO, that is, the facts and evidence on which those decisions may validly be based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence submitted by the parties. However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgments of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraphs 28 and 29, and of 13 June 2012, XXXLutz Marken v OHIM — Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 38).

30 Furthermore, it follows from the case-law that the various bodies of EUIPO are not obliged to establish in their decisions the accuracy of facts that are common knowledge (see judgment of 19 June 2014, Kampol v OHIM — Colmol (Nobel), T‑382/12, not published, EU:T:2014:563, paragraph 58 and the case-law cited). The Board of Appeal is, additionally, not even required to give examples of such practical experience (see judgment of 3 February 2011, Gühring v OHIM (Combination of the colours broom yellow and silver grey), T‑299/09 and T‑300/09, not published, EU:T:2011:28, paragraph 36 and the case-law cited).

31 First of all, it must be noted that, in the present case, the Opposition Division found that there was a low degree of similarity between the goods covered by the earlier mark and the goods in Class 10, covered by the mark applied for, on the basis that those goods had the same end users and distribution channels and, in addition, that they were complementary. The applicant disputed that low degree of similarity before the Board of Appeal.

32 The Board of Appeal’s finding in paragraph 31 of the contested decision purports to explain the complementarity between the goods covered by the earlier mark and ‘medical devices for use with respiratory apparatus, inhalers, nebulisers and nasal sprays, aerosol dispensers for medical purposes, vaporisers for medical purposes’, in Class 10, covered by the mark applied for. It is apparent from it that, contrary to the applicant’s submission, that finding is a reply to the applicant’s argument disputing the Opposition Division’s finding that those goods are similar to a low degree.

33 Next, it should be noted, as EUIPO observed, that the Board of Appeal, in pointing out in paragraph 31 of the contested decision that certain gastric conditions are linked to respiratory disorders, which require simultaneous treatment, based its decision on well-known facts likely to be known by the relevant public consisting of medical professionals and end users, that is, inter alia, patients with those diseases. In addition, the Board of Appeal gave the example of chronic acid reflux to illustrate that well-known fact.

34 In that regard, it should be noted that the applicant does not dispute the veracity of the statement that a condition such as chronic acid reflux may lead to respiratory problems.

35 Lastly, as regards the applicant’s argument that it did not have the opportunity to challenge that finding, which was made for the first time by the Board of Appeal, it should be recalled that the information taken into consideration by the Board consisted, as was found in paragraph 33 above, of well-known facts, the accuracy of which has not been established by EUIPO.

36 Furthermore, it should be noted that an applicant for a trade mark against whom EUIPO relies on well-known facts may challenge their accuracy before the General Court (judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 52). It should be noted that, in the present case, the applicant merely claims that the fact that gastric conditions can be linked to respiratory disorders is not a well-known fact, but it puts forward no argument to show that that is not the case.

37 Moreover, the reference made by the applicant to the judgment of 16 October 2014, Novartis v OHIM — Tenimenti Angelini (LINEX) (T‑444/12, not published, EU:T:2014:886) is not relevant, since in that judgment the General Court did not find an infringement of Article 76(1) of Regulation No 207/2009 by the Board of Appeal. The General Court found, first, that the documents produced before EUIPO did not show that drugs containing lactobacillus acidophilus could be used to treat incontinence and, secondly, that the Board of Appeal should not, on the basis of the available evidence, have found that diapers or napkins existed which could release that bacteria into the vagina. The applicant may draw no inference from the decision in that case as to whether the finding made in paragraph 31 of the contested decision is well known.

38 In the second place, the applicant argues that the finding, in paragraph 33 of the contested decision, that ‘pharmaceuticals for the treatment of gastrointestinal disorders can be administered using the contested apparatus’ is not based on the evidence or pleas relied on by the parties. It disputes that pharmaceuticals for the treatment of gastrointestinal disorders, covered by the earlier mark, could be administered using devices such as inhalers, nebulisers and nasal vaporisers, aerosol dispensers or vaporisers.

39 It is sufficient to note that that argument is based on an incomplete reading of the contested decision. That finding of the Board of Appeal also appears in paragraph 30 of the contested decision and concerns only ‘medical apparatus and instruments for dispensing medicine’ in Class 10, covered by the mark applied for. The Board of Appeal considered that ‘pharmaceutical drugs and products for the treatment of gastrointestinal diseases’, covered by the earlier mark, could be administered by means of ‘medical apparatus and instruments for dispensing medicine’, covered by the mark applied for, and that those goods were similar to a low degree.

40 It took the view, on the other hand, in respect of the other medical apparatus and instruments intended for the treatment of respiratory diseases, in Class 10, covered by the mark applied for, such as ‘inhalers, nebulisers and nasal sprays, aerosol dispensers or vaporisers’, that they were to a low degree similar because of the link between gastric conditions and respiratory disorders in certain diseases which requires those conditions to be treated simultaneously.

41 Contrary to the applicant’s submissions, it is not apparent from the contested decision that the Board of Appeal stated that ‘pharmaceutical drugs and products for the treatment of gastrointestinal diseases’, covered by the earlier mark, could be administered by ‘inhalers, nebulisers and nasal sprays, aerosol dispensers or vaporisers’, covered by the mark applied for.

42 In the third place, the applicant submits that the Board of Appeal based its decision on too broad a definition of the goods covered by the earlier mark. Use of the earlier mark was proved only in respect of ‘pharmaceutical drugs for the treatment of disorders of the bowel in humans’ and there was no evidence establishing a link between disorders of the bowel and respiratory disorders or that nebulisers and inhalers could be used to treat disorders of the bowel.

43 In that regard, it is enough to note that the first plea in law having been rejected as inadmissible, the applicant’s submission that the Board of Appeal based its decision on too broad a definition of the goods covered by the earlier mark must be rejected.

The third ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

45 The applicant claims that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

46 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 is not to 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

47 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 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 identified (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).

48 It should be noted that, in the present case, the earlier mark is a German trade mark registration and the goods at issue are medical devices and pharmaceutical products.

49 It is clear from the case-law that, where the goods at issue are pharmaceutical products, the relevant public is composed of medical professionals, on the one hand, and patients, as end users of those goods, on the other (see judgment of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 23 and the case-law cited; judgment of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 27). Furthermore, in the case of pharmaceutical products, the relevant public displays a higher than average degree of attentiveness (see judgments of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 26 and the case-law cited, and of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 33 and the case-law cited).

50 Therefore, the Board of Appeal correctly held that the relevant public consists of medical professionals and end users in Germany with a high degree of attention.

51 It should be recalled that, in assessing the similarity of the goods concerned, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 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).

52 It should be observed, at the outset, that the applicant submits more than once that the Board of Appeal should have taken into account, for the comparison of the goods concerned, that the earlier mark covered only ‘pharmaceutical products for the treatment of disorders of the bowel in humans’ in respect of which genuine use had been shown. In that regard, it suffices to recall that, the first plea in law having been rejected as inadmissible, the applicant may not dispute that genuine use of the earlier mark was shown for ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’ and that, therefore, the earlier mark had to be regarded as covering those goods for the purposes of the comparison of the goods concerned. Therefore, the applicant’s arguments disputing the identity or similarity of the goods concerned based on restricting the goods covered by the earlier mark to ‘pharmaceutical products for the treatment of disorders of the bowel in humans’ alone must be rejected.

53 In the first place, the applicant argues that the Board of Appeal was wrong to find that ‘pharmaceutical and veterinary preparations’, in Class 5, covered by the mark applied for, and ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, in Class 5, covered by the earlier mark, were identical. It criticises the Board of Appeal for not taking into account that the goods covered by the mark applied for were drugs available only on prescription and administered by inhalation by doctors and health professionals in order to treat chronic respiratory infections.

54 The Board of Appeal considered that the ‘pharmaceutical and veterinary preparations’ covered by the mark applied for were identical to the ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’ covered by the earlier mark. It took the view that those drugs have the same nature (pharmaceutical products), the same purpose, namely, the treatment of health problems in humans and animals, the same consumers, namely, medical professionals and patients, and the same distribution channels, typically pharmacies.

55 The comparison of the goods concerned must be carried out on the basis of the description of the goods referred to in the application for registration and not on the basis of those for which the marks at issue were actually used and the Board of Appeal did not have to take account of the reality of the market. The assessment of the likelihood of confusion on the basis of Article 8(1)(b) of Regulation No 207/2009 must be made taking into account, on the one hand, all the goods and services covered by the mark applied for and, on the other hand, all the goods and services for which the earlier mark has been registered (judgments of 22 April 2008, Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 26, and of 6 March 2015, Novomatic v OHIM — Berentzen Mally Marketing plus Services (BLACK JACK TM), T‑257/14, not published, EU:T:2015:141, paragraph 25).

56 In that regard, it is sufficient to note that the application for registration is intended to cover all ‘pharmaceutical and veterinary preparations’ without being limited to drugs for respiratory conditions. As the Board of Appeal noted, those preparations refer to all types of drugs. Contrary to the applicant’s submissions, in the comparison of the goods the Board of Appeal could not confine itself to taking account of drugs administered by inhalation for the treatment of respiratory conditions.

57 Moreover, the applicant’s argument that the goods covered by the mark applied for are drugs available only on prescription and administered by doctors is irrelevant in establishing a difference between the goods concerned, since that may also be the case for goods covered by the earlier mark.

58 In the second place, the applicant considers that the Board of Appeal erred in finding that there was an overlap between ‘veterinary preparations’, covered by the mark applied for, and ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, covered by the earlier mark, since those goods were held to be different in an earlier decision of the Opposition Division of EUIPO.

59 The Board of Appeal stated that the ‘veterinary preparations’, covered by the mark applied for, constituted a broad category covering all medicines intended to prevent and treat diseases in animals and that that category included, or at least overlapped with, the products covered by the earlier mark, which included medicines used to treat gastrointestinal disorders in animals.

60 It is settled case-law that, when the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical. The same applies when the goods designated by the earlier mark are included in a more general category designated by the mark applied for (see judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited, and of 22 May 2012, Aitic Penteo v OHIM — Atos Worldline (PENTEO), T‑585/10, not published, EU:T:2012:251, paragraph 57 and the case-law cited).

61 In the present case, it is sufficient to note that, since the goods covered by the earlier mark can be veterinary preparations for the treatment of gastrointestinal disorders in animals, they are, therefore, included in the general category of ‘veterinary preparations’, covered by the mark applied for.

62 The applicant may not call that finding into question by merely relying on a decision of the Opposition Division of EUIPO. First, it should be recalled that the decisions concerning registration or protection of a sign as an EU trade mark which the Boards of Appeal are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited, and of 12 April 2016, Auyantepui Corp. v EUIPO — Magda Rose (Mr Jones), T‑8/15, not published, EU:T:2016:213, paragraph 48 and the case-law cited). Secondly, it is important to note that the applicant merely referred to a decision of the Opposition Division of EUIPO and the Board of Appeal cannot, in any event, be bound the decision of a lower instance (judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48, and of 9 November 2016, Gallardo Blanco v EUIPO — Expasa Agricultura y Ganadería (Representation of a branding iron (shape of an H-shaped horse bit), T‑716/15, not published, EU:T:2016:649, paragraph 109).

63 In the third place, the applicant submits that the Board of Appeal erred in finding that ‘antibiotic preparations’, covered by the mark applied for, and ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, covered by the earlier mark, were identical. It argues that it is common knowledge that many gastrointestinal disorders are not linked to bacteria and that the Board of Appeal therefore erred in concluding that antibiotic preparations and the goods covered by the earlier mark were similar on the ground that gastrointestinal disorders were generally bacterial in origin.

64 The Board of Appeal considered that there was an overlap between the ‘antibiotic preparations’, covered by the mark applied for, and the ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, covered by the earlier mark, given that those disorders were usually bacterial in origin. It added that, those goods having the same nature, purpose, end users and distribution channels, they were identical.

65 The argument put forward by the applicant cannot call that assessment into question. It is sufficient to note that the applicant does not dispute that certain gastrointestinal disorders can be bacterial in origin and that the drugs for treating those disorders can be antibiotic preparations. That observation is sufficient to conclude that ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, covered by the earlier mark, may be included in the more general category ‘antibiotic preparations’, covered by the mark applied for. Therefore, because of the existence of an overlap between those goods, they are identical.

66 It is clear from the foregoing that the applicant put forward no argument that might call into question the finding of the Board of Appeal that the ‘pharmaceutical and veterinary preparations; antibiotic preparations’, in Class 5, covered by the mark applied for, and the ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, in Class 5, covered by the earlier mark, are identical.

67 The applicant argues that, in concluding that the goods in Class 10, covered by the mark applied for, and the goods covered by the earlier mark are similar to a low degree, the Board of Appeal wrongly relied on the judgment of 18 October 2007, AMS v OHIM — American Medical Systems (AMS Advanced Medical Services) (T‑425/03, EU:T:2007:311), which concerned different goods. It maintains that there was no evidence before the Board of Appeal to show that ‘Medical devices for use with respiratory apparatus, inhalers, nebulisers and nasal sprays, aerosol dispensers for medical purposes, vaporisers for medical purposes’, covered by the mark applied for, were used for the treatment of gastrointestinal conditions or were in any way similar to goods covered by the earlier mark. There was no evidence before the Board of Appeal that gastrointestinal disorders are treated by drugs administered via an inhaler or a nebuliser. It considers that, contrary to what was stated by the Board of Appeal, there is no evidence to suggest that there is a link between gastrointestinal disorders and respiratory disorders. It disputes that those goods are complementary, that they have the same purpose, distribution channels and end users.

68 The Board of Appeal considered that the goods covered by the earlier mark and the goods in Class 10, covered by the mark applied for, were similar to a low degree, given that they belonged to the medical sector and were intended to be used in the course of treatment, but that they were also complementary in that regard. It took the view that because the goods covered by the earlier mark could be administered via ‘medical apparatus and instruments for dispensing medicine’, covered by the mark applied for, those goods were similar to a low degree. On the other hand, it considered that the other goods in Class 10, covered by the mark applied for, were intended for the treatment of respiratory diseases and that they also showed a low degree of similarity to the goods covered by the earlier mark, stating that it was not unusual for gastric conditions to be linked to respiratory disorders and that those diseases had to be treated simultaneously. Furthermore, it stated, first, that the goods at issue were produced by different undertakings and were not in competition and, secondly, that they had the same purpose, distribution channels and end users.

69 It should be noted that the applicant merely states that it does not agree with the Board of Appeal’s findings that the goods at issue were complementary and that they had the same purpose, namely, treating health problems, the same distribution channels, namely, pharmacies, and the same end consumers, namely, medical professionals and patients. However, it raises no specific argument to dispute those findings.

70 Furthermore, contrary to the applicant’s submissions, the Board of Appeal did not state that ‘pharmaceutical drugs and products for the treatment of gastrointestinal disorders’, covered by the earlier mark, could be administered via medical devices for use with respiratory apparatus, covered by the mark applied for, such as an inhaler or a nebuliser. The Board of Appeal made such a finding only for ‘medical apparatus and instruments for dispensing medicine’, covered by the mark applied for, which the applicant does not dispute.

71 On the other hand, it is apparent from the contested decision that, as regards medical apparatus and instruments intended for the treatment of respiratory diseases, covered by the mark applied for, the Board of Appeal based its decision on a different analysis. It stated that the goods covered by the earlier mark were similar to a low degree on the ground that certain gastric conditions were linked to respiratory conditions and required simultaneous treatment.

72 In that regard, the applicant merely disputes the existence of that link. The Board of Appeal gave the example of chronic acid reflux which inflamed the bronchial passages causing shortness of breath, and explained that, in such a disease the patient’s stomach acid and bronchial inflammation had to be treated at the same time. The applicant puts forward no argument which calls into question the accuracy of that finding. Moreover, it is apparent from paragraph 30 above that the Board of Appeal was not required to establish the accuracy of a well-known fact and the applicant cannot therefore criticise the Board for having no evidence before it of a link between gastrointestinal disorders and respiratory disorders.

73 Lastly, it is apparent from the contested decision that the Board of Appeal referred to the judgments of 18 October 2007, AMS Advanced Medical Services (T‑425/03, EU:T:2007:311), and of 26 March 2015, Radecki v OHIM — Vamed (AKTIVAMED) (T‑551/13, not published, EU:T:2015:191), to illustrate the fact that it had previously been held that goods in Class 5 and those in Class 10 both belong to the medical sector and were therefore intended to be used in the course of treatment and that they could be similar. Contrary to the applicant’s submission, the Board of Appeal did not rely on the judgment of 18 October 2007, AMS Advanced Medical Services (T‑425/03, EU:T:2007:311), to find that the goods concerned were similar, rather it undertook a comparison of the goods covered by the marks at issue, applying the various relevant factors that were mentioned in the case-law referred to in paragraph 51 above.

74 It is clear from the foregoing that the applicant has put forward no argument that could call into question the Board of Appeal’s finding that the goods covered by the earlier mark were to a low degree similar to the goods in Class 10, covered by the mark applied for.

75 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

76 Account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must rely on the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

77 The Board of Appeal considered that the signs at issue were visually similar, that they were phonetically similar to a high degree and that, since they had no meaning, the conceptual comparison had no influence on the assessment of similarity.

78 In the first place, the applicant argues that, if the Board of Appeal had correctly assessed the distinctive and dominant elements of the signs at issue, it would have found that they had only a very low degree of similarity. It states that the Board of Appeal failed to find that the distinctive elements of the signs at issue were not similar. The distinctive element of the earlier mark is the suffix ‘na’, since the element ‘coli’ is descriptive and not distinctive in respect of the goods for the treatment of gastrointestinal disorders. The applicant submits that ‘coli’ is a ‘prefix inferring the presence of Escherichia coli and Enterobacteriaceae as the cause of bacterial infections’, or a prefix meaning ‘colon’ and states that a large number of EU trade marks or German trade marks contain the prefix ‘coli’. On the other hand, it considers that the element ‘coli’ constitutes the distinctive element of the mark applied for, given that it has no meaning for the goods covered by that mark and the element ‘neb’ will be perceived as referring to a nebuliser. It disputes the Board of Appeal’s assessment that the element ‘neb’ has no meaning for the German-speaking public, and refers to evidence showing that nebulisers are marketed in Germany under the term ‘nebuliser’ or ‘neb’.

79 It should be noted that the signs at issue are, on the one hand, the earlier German figurative mark Colina and, on the other hand, the word mark applied for, COLINEB.

80 The Board of Appeal considered that the signs at issue contained no element that could be regarded as more distinctive or dominant than other elements.

81 According to the case-law, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, the consumer will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57).

82 In the present case, as regards the earlier mark, Colina, because, as the intervener stated, the bacteria Escherichia coli is referred to as ‘Kolibacterium’ in German, it is, therefore, hardly likely that the German consumer understands the beginning of the earlier mark ‘coli’ as a reference to that bacterium. The applicant’s argument that the German consumer would recognise it as the word ‘colon’ cannot succeed inasmuch as, as EUIPO notes, that word has no meaning in German, the equivalent word in German being the word ‘Darm’. In addition, there is no reason for the public to perceive the end of the sign ‘na’ as a suffix, ‘na’ having no meaning of its own in German.

83 As regards the mark applied for, COLINEB, it must be noted that the applicant accepts that ‘coli’ has no meaning in relation to the goods concerned. Furthermore, the German word meaning ‘nebuliser’ is ‘Vernebler’. The German consumer will, therefore, not identify the ending ‘neb’ as having a meaning on its own or as corresponding to a word that it knows. Moreover, as EUIPO observes, that argument can, in any event, relate only to nebulisers and not to the other goods in Class 10, covered by the mark applied for.

84 As to the argument that there are numerous marks containing the prefix ‘coli’ or the element ‘neb’, it is not such as to establish that the German public understands their meaning.

85 Therefore, contrary to the applicant’s submission, the relevant public will not break down the signs at issue into several parts, in so far as no part of those signs has any specific meaning or resembles a specific word known to the German consumer. Those signs will not be perceived as made up of two words joined together but of a single word.

86 Therefore, the Board of Appeal was right to hold that the signs at issue had no distinctive or dominant elements that could be taken into consideration during their comparison.

87 In the second place, concerning the visual comparison, the applicant argues that the signs are visually similar to only a very low degree and that the Board of Appeal did not give enough weight to the stylisation of the earlier mark, whose most dominant elements are the inverted commas and the initial letter which resembles a large font, lower case letter ‘e’ in a stylised, italic typeface.

88 It should be observed that, the signs at issue being composed of six and seven letters, respectively, the first five of which are identical, and the stylisation of the earlier mark being not particularly original or striking, for it is a word written in lower case italics with the initial in capitals, the Board of Appeal was, therefore, right to hold that the signs at issue were visually similar.

89 The Board of Appeal found that the difference in the last letters and group of letters ‘a’ and ‘eb’, the inverted commas and the stylisation of the earlier mark were not enough to counteract the similarity between the signs in respect of the letters ‘c’, ‘o’, ‘l’, ‘i’, ‘n’, constituting the majority of the signs at issue.

90 It is clear from this that, contrary to the applicant’s submission, the Board of Appeal did not disregard those elements of stylisation of the earlier mark. In addition, the applicant cannot maintain that the first letter of the earlier mark will be perceived as the lower case letter ‘e’ in large font. As regards the initial letter, it will be perceived as a letter ‘c’ in upper case. Furthermore, even though the inverted commas should be regarded as part of the mark applied for, they are purely decorative and cannot be regarded as dominating the overall impression.

91 In the third place, concerning the phonetic comparison, the applicant submits that the signs are similar only to a very low degree, that the Board of Appeal did not take into account the very different endings of the signs at issue and that the suffix ‘neb’, in the mark applied for, is very unusual in the German language.

92 It should be noted, as did the Board of Appeal, that the signs at issue, each composed of three syllables, have the same first two syllables ‘co’ and ‘li’ and their third syllables ‘na’ and ‘neb’ are similar in that they start with the letter ‘n’.

93 Therefore, the sole difference in the ending of the last syllable, noted by the applicant, cannot call into question the Board of Appeal’s finding that there is a high degree of similarity between the signs at issue.

94 Furthermore, the fact that the ending ‘neb’ is unusual in the German language is not relevant in respect of the phonetic comparison of the signs.

95 In the fourth place, concerning the conceptual comparison, the applicant submits that the Board of Appeal erred in holding that a comparison could not be made. As the element ‘neb’ of the mark applied for refers to a nebuliser and the element ‘coli’ in the earlier mark is understood as a reference to the bacterium Escherichia coli or to the colon, the signs at issue are, therefore, different.

96 It should be noted that it is apparent from paragraphs 82 to 85 above that for the German consumer no part of the signs at issue has a concrete meaning or resembles a specific word that he knows. In any event, it is sufficient to find, as did the Board of Appeal, that none of the signs at issue has meaning taken as a whole, which the applicant does not even claim, and that, therefore, the conceptual comparison is not possible.

97 The applicant submits that the Board of Appeal erred in finding that the earlier mark had a normal level of distinctiveness. It considers that the element ‘coli’ lacks distinctiveness for the goods covered by that mark, inasmuch as it will be perceived as a prefix referring to Escherichia coli bacteria or to the colon.

98 In that regard, suffice it to note that it is apparent from paragraph 82 above that the German consumer will not understand the beginning of the earlier mark COLINA as referring to Escherichia coli bacteria or to the colon. The applicant raises, therefore, no argument capable of calling into question the assessment of the Board of Appeal that the earlier mark has a normal degree of inherent distinctiveness.

99 The applicant also criticises the Board of Appeal for not giving sufficient weight, in its assessment of the likelihood of confusion, to the fact that the relevant public displayed a high degree of attention. In its opinion, taking into account that the goods at issue are different and that the signs at issue are visually and phonetically similar to a low degree, that high degree of attention implies that there is no likelihood of confusion.

100 In that regard, it must be held that, first, the Board of Appeal took into account the high degree of attention of the relevant public in its assessment of the likelihood of confusion. It stated that, even for a public with a higher level of attention, the average consumer only rarely has the chance to make a direct comparison between the signs at issue and must rely on his imperfect recollection of them. It considered that, in view of the similarity between the marks at issue and the identity or similarity of the goods concerned, the fact that the relevant public’s level of attention is above average is insufficient to exclude any likelihood of confusion.

101 Secondly, inasmuch as it is clear from the foregoing that the applicant wrongly claims that the goods concerned are different and that the signs at issue are similar to a low degree, the applicant is therefore also wrong to conclude from this that there was no likelihood of confusion.

102 Therefore, the applicant has not demonstrated that the Board of Appeal erred in finding a likelihood of confusion.

103 It follows from all of the foregoing that the third plea in law must be rejected and, consequently, that the action must be dismissed in its entirety.

104 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.

105 Since the applicant has been unsuccessful and EUIPO has applied for it to pay the costs, the applicant must be ordered to bear its own costs and to pay those incurred by EUIPO.

106 Since the intervener has not applied for costs against the applicant, the intervener shall bear its own costs.

2. Orders Forest Pharma BV to bear is its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Forest Pharma v EUIPO - Ipsen Pharma (COLINEB) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-36/17 (05 October 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T3617.html Cite as: ECLI:EU:T:2017:690, EU:T:2017:690, [2017] EUECJ T-36/17

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