Recordati Orphan Drugs v EUIPO - Laboratorios Normon (NORMOSANG) (Intellectual, industrial and commercial property - Judgment) [2018] EUECJ T-103/17 (09 March 2018)

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(EU trade mark — Opposition proceedings — Application for EU word mark NORMOSANG — Earlier national word mark NORMON — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Rule 19(2)(a)(ii) and Rule 20(1) of Regulation (EC) No 2868/95 (now Article 7(2)(a)(ii) and Article 8(1) and (7) of Delegated Regulation (EU) 2017/1430))

Recordati Orphan Drugs, established in Puteaux (France), represented by J. Quirin, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,

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

Laboratorios Normon, SA, established in Tres Cantos (Spain), represented by I. Gonzalez-Mogena Gonzalez, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 22 November 2016 (Case R 831/2016‑5), relating to opposition proceedings between Laboratorios Normon and Recordati Orphan Drugs,

composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

having regard to the application lodged at the Court Registry on 17 February 2017,

having regard to the response of EUIPO lodged at the Court Registry on 2 May 2017,

having regard to the response of the intervener lodged at the Court Registry on 4 May 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 26 September 2013, the applicant, Recordati Orphan Drugs, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pharmaceutical preparations containing human hemin’.

4 The trade mark application was published in Community Trade Marks Bulletin No 215/2013 of 12 November 2013.

5 On 12 February 2014, the intervener, Laboratorios Normon, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the Spanish word mark NORMON registered under No 2402142 and designating goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and hygienic products, 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, herbicides’;

– the Spanish word mark NORMOVITE registered under No 306861 and designating goods in Class 5 corresponding to the following description: ‘Pharmaceutical specialties’;

– the Spanish word mark NORMOXACINA registered under No 1244986 and designating goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and hygienic products, dietetic substances adapted for medical use; food for babies; plasters; materials for dressings (bandages); material for stopping teeth; dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;

– the international word mark NORMON designating Portugal and registered under No 861938, designating goods in Class 5 corresponding 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 dental fillings and dental impressions; disinfectants; pesticides; fungicides; herbicides’;

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and in Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 respectively) concerning the first earlier right, and the grounds set out in Article 8(1)(b) of that regulation concerning the other earlier rights.

8 By request of 24 April 2014, the applicant asked that the scope of the EU mark be limited to the following goods in Class 5: ‘Pharmaceutical preparations containing human hemin for administration by injection or perorally for the treatment of hepatic porphyria’.

9 On 31 July 2014, EUIPO informed the parties of the commencement of the adversarial part of the opposition proceedings and requested the intervener to submit, by 19 October 2014, arguments and evidence in support of its opposition, pursuant to, inter alia, Rule 19(1) and (2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (now Article 7(1) and (2) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)). On 17 October 2014, the intervener submitted its statement in intervention setting out its grounds for opposition. On 15 December 2014, the applicant submitted observations on that statement in intervention. In those observations, it not only disputed the arguments of the intervener based on Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, but also contended that the intervener had proved the existence of only one of its earlier rights, namely the international registration, and requested the intervener to furnish proof that its earlier rights had been put to genuine use, pursuant to Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001).

10 The intervener provided evidence demonstrating the use of its earlier rights on 23 April 2015. On 25 June 2015, the applicant submitted its observations in that regard. In those observations, it argued that genuine use of those rights had not been proved.

11 By decision of the Opposition Division of 18 March 2016, the opposition was upheld for all the goods concerned on the ground that there was a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation No 207/2009, with the Spanish mark registered under No 2402142, in so far as that mark covers pharmaceutical preparations in Class 5.

12 On 3 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the decision of the Opposition Division.

13 By decision of 22 November 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal.

14 The Board of Appeal held that the existence and validity of the earlier Spanish mark NORMON, registered under No 2402142, had been duly proved, as the intervener had submitted in good time an extract from the Spanish trade mark database Sitadex concerning that mark, and confirmation of its renewal (paragraphs 17 to 20 of the contested decision). The Board of Appeal also accepted the sufficiency of the evidence submitted by the intervener that that mark had been put to genuine use in respect of various types of pharmaceutical preparations (paragraphs 21 to 34 of the contested decision).

15 As the earlier mark is a Spanish mark, the Board of Appeal found that the relevant territory was Spain. To the extent that the marks at issue cover pharmaceutical preparations, the Board of Appeal took the view that health professionals and the end consumers themselves, that is to say, patients, have a high level of attention (paragraphs 39 to 42 and 48 of the contested decision).

16 As the ‘pharmaceutical products’ of the earlier mark constitute a broad category which may encompass all sorts of pharmaceutical preparations, general or specific, intended for all kinds of treatment, issued with or without a prescription, the Board of Appeal held that the goods covered by the contested mark were included in that category, with the result that they had to be regarded as being identical to those goods (paragraphs 43 to 48 of the contested decision).

17 With regard to the comparison of the marks at issue, the Board of Appeal found that none of the marks contained an element more distinctive than others. According to the Board of Appeal, those two signs are visually and phonetically similar to an average degree on account of, inter alia, the fact that their first part and first syllable are identical. Furthermore, taken as a whole, they have no meaning, even though the ‘sang’ element of the contested sign could be associated with ‘sangre’, which means ‘blood’ in Spanish, and though the ‘normo’ element could be perceived as similar to a prefix referring to the word ‘normal’. Thus, the marks at issue were regarded, in the contested decision, as being overall similar (paragraphs 49 to 55 of the contested decision).

18 According to the Board of Appeal, although certain elements of the signs at issue differ, their shared features, namely, the identity of the goods and the partial identity of the signs, would be liable to lead the public, even a highly attentive public, to believe that the goods come from the same undertaking and, more specifically, that the contested sign belongs to the family of marks of the intervener containing the shared element ‘normo’ (paragraphs 56 to 64 of the contested decision).

19 As for the argument that the marks at issue allegedly coexist peacefully on the market, the Board of Appeal rejected that argument on the ground, first, that the applicant, in essence, had not adduced any evidence to show that the mark for which it was applying had been used throughout the EU market and, second, that it had not been shown that the marks at issue coexisted on the same market without there being a likelihood of confusion between them (paragraphs 65 and 66 of the contested decision), with the result that it found that there was a likelihood of confusion between the signs at issue on the basis of Article 8(1)(b) of Regulation No 207/2009 and did not proceed to analyse the arguments based on Article 8(5) of that regulation.

The admissibility of the general referral made by the applicant to its arguments submitted before EUIPO

23 In paragraphs 16 and 77 of its application, the applicant refers to the entirety of the arguments which it submitted to the Opposition Division and the Board of Appeal and asks the Court to refer to the administrative file. Specifically, in paragraph 16 of its application, the applicant states that it ‘reiterates the whole submissions which have been filed with the Opposition Division and the Board of Appeal, and respectfully invites the General Court to refer to the administrative file of the pending case’. In paragraph 77 of its application, the applicant maintains that, ‘for all the ... reasons [set out in that application], and for those set out before EUIPO, ... the public ... cannot believe that the goods come from the same undertakings or economically linked undertakings, in view of the overall differences of the signs’.

24 In that regard, it should be noted, as did EUIPO, that, by virtue of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the proceedings before the General Court in accordance with the first paragraph of Article 53 of that statute, and of Article 76(d) of the Rules of Procedure of the General Court, applicable to intellectual property matters by virtue of Article 171 and Article 177(1) of those rules, any application lodged in an action brought against EUIPO must indicate the subject matter of the proceedings and a summary of the pleas in law relied on. It is clear from the case-law of the Court of Justice that the ‘summary of the pleas in law’ which must be stated in any application, as provided for by those articles, means that the application must specify the nature of the grounds on which it is based. Thus, in particular, it is necessary, in order for an action before the General Court to be admissible, that the basic matters of fact and law relied on be indicated, at least in summary form, coherently and intelligibly in the application itself. Whilst the body of the application may certainly be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the abovementioned provisions, must appear in the application (see, to that effect, judgment of 11 September 2014, MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraphs 39 and 40). In order to guarantee legal certainty and the sound administration of justice, the summary of the applicant’s pleas in law must be sufficiently clear and precise to enable the defendant to prepare its defence and the competent Court to rule on the action. Thus, it is not for the General Court to seek and identify, in the annexes, or even in EUIPO’s administrative file, the pleas on which it may consider the action to be based. Similar requirements are called for where a submission is made in support of a plea in law (see, to that effect, judgments of 13 June 2013, Versalis v Commission, C‑511/11 P, EU:C:2013:386, paragraph 115; of 11 September 2014, MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraphs 38 to 41; and of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19).

25 However, the applicant does not at any time identify the specific points of its application that it wishes to supplement by those references. Nor does it specify which passages of the observations that it submitted before EUIPO would, in its opinion, be capable of supporting its assertions. The applicant therefore simply made a general reference to the administrative file, within the meaning of the case-law cited in the previous paragraph of this judgment. It follows that the general reference made by the applicant to the arguments submitted before EUIPO must be declared inadmissible.

The admissibility of certain evidence submitted for the first time before the Court

26 It must be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It follows from that provision that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to that Board of Appeal when it adopted that decision (judgment of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 137 and 138; see, also, judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraphs 24 and 25 and the case-law cited).

27 As the conditions for the admissibility of an action, and those for the grounds and evidence submitted in support of that action, concern an absolute bar to proceeding with the action, the Courts of the European Union must consider them of their own motion should such an issue arise (judgment of 16 January 2014, Steiff v OHIM (Fabric tag with metal button in the middle section of the ear of a soft toy), T‑434/12, not published, EU:T:2014:6, paragraph 12).

28 As observed, in essence, by EUIPO, Annex A 8 to the application, which contains, in addition to a copy of Regulation (EC) No 141/2000 of the European Parliament and of the Council of 16 December 1999 on orphan medicinal products (OJ 2000 L 18, p. 1), an article on orphan medicinal products and two articles on their distribution, was submitted for the first time before the Court. It must be noted at the outset that the same is true of Annex A 9 to the application, consisting of pages from two internet sites, including the website of the Oficina Española de Patentes y Marcas (OEPM, Spanish Patents and Trade Marks Office), concerning the registration of the sign NORMOSANG as a national trade mark.

29 Therefore, with the exception of the copy of Regulation No 141/2000, with which the Courts of the European Union are deemed to be familiar, in line with the principle iura novit curia, the documents in Annexes A 8 and A 9 to the application must be declared inadmissible.

30 The applicant’s argument that the evidence submitted for the first time before the Court merely ‘confirms and amplifies or completes’ the evidence submitted before the Board of Appeal cannot call that finding into question. It has no bearing on the fact that the Board of Appeal did not have the information in those documents available to it (see, to that effect, judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 27).

31 As a preliminary point, it should be noted that, in its first head of claim, the intervener contends that the Court should dismiss the action and ratify the contested decision. Given that ‘ratifying’ the contested decision is tantamount to dismissing the action, the intervener’s first head of claim must be regarded as seeking, in essence, the dismissal of the action (see, to that effect, judgment of 13 December 2016, Apax Partners v EUIPO — Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 15 and the case-law cited).

32 In support of the action, the applicant raises two pleas, alleging, in the first place, infringement of Rule 19(2)(a)(ii) and Rule 20(1) of Regulation No 2868/95 (now Article 7(2)(a)(ii) and Article 8(1) and (7) of Delegated Regulation 2017/1430), and, in the second place, infringement of Article 8(1)(b) of Regulation No 207/2009.

The first plea: infringement of Rule 19(2)(a)(ii) and Rule 20(1) of Regulation No 2868/95

33 The applicant argues, in essence, that the evidence adduced by the intervener within the time limit specified under Rule 19(1) of Regulation No 2868/95 is not sufficient to establish, inter alia, the existence of the earlier Spanish mark NORMON. The applicant does not, however, raise a plea alleging a potential incorrect assessment of the evidence of genuine use of that mark. According to the applicant, the source of the document presented as a registration certificate of that mark from the OEPM’s website is unclear. The requirement that the source of such a document be clearly identifiable is of crucial importance, inasmuch as the applicant cannot be expected to recognise the website layouts of the intellectual property offices of all EU Member States. The Board of Appeal, it submits, cannot make up for that lack of clarity by relying either on its own knowledge of the layout of the register concerned or on documents submitted by the intervener after the expiry of the period specified in Rule 19(1) of Regulation No 2868/95. Nor is the submission of a renewal certificate sufficient, as the requirements to produce a copy of the registration certificate and of the latest renewal certificate are cumulative.

35 In that regard, it should be borne in mind that Rule 19 of Regulation No 2868/95 provides:

‘1. [EUIPO] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least two months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).

2. Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:

(a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting:

(ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;

‘If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.’

37 In the present case, in accordance with Rule 19(2)(a) of Regulation No 2868/95, the intervener was required to provide proof, before the date specified in the letter of EUIPO of 31 July 2014, namely, 19 October 2014, of the existence, validity and scope of protection of the marks on which the opposition was based.

38 It is necessary to present the documents provided by the intervener with regard to the Spanish word mark NORMON that were examined by the Board of Appeal and to ascertain whether they were sufficient to prove the existence, validity and scope of protection of the earlier mark.

39 It is apparent from paragraph 19 of the contested decision that the Board of Appeal took into consideration two types of documents submitted by the intervener as part of its reply of 17 October 2014.

40 The first document comprises two pages in Spanish, translated in part into English, reproducing information on the registration, renewal and validity of the mark NORMON, on its proprietor and on the goods concerned. However, those pages contain no indication as to their source. Thus, there may be doubts as to their authenticity, and the applicant therefore has grounds to argue that the Board of Appeal could not rely on those pages.

41 Secondly, the Board of Appeal examined a renewal certificate for that mark, together with its English translation. In that regard, it should be borne in mind that, as EUIPO rightly argues, the submission of a renewal certificate is sufficient to establish the existence, validity and scope of protection of the mark on which the opposition is based, if it contains all the information necessary for that purpose (judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraphs 57 to 65).

42 The renewal certificate for the earlier mark states that it was issued by the Director of the OEPM Department of Distinctive Signs on 20 June 2011, that is to say, before the intervener filed its notice of opposition, and that that mark was renewed for a period of 10 years, until 22 May 2021. That certificate, which thus provides information on the minimum period of validity of that mark, also provides the registration number of the mark, namely No 2402142, the goods that it covers, including pharmaceutical products in Class 5, and the proprietor, namely the intervener.

43 It follows that all of the information necessary to prove the existence, validity and scope of protection of the earlier mark is contained in the renewal certificate in question. The Board of Appeal was therefore able to rely on that certificate in order to find that the intervener had satisfied the requirements in Rule 19(2)(a)(ii) of Regulation No 2868/95. Accordingly, Rule 20(1) is not applicable in the present case.

45 The present plea comprises six heads of complaint: (i) incorrect definition of the relevant public, (ii) incorrect assessment of the visual and phonetic comparison of the signs, (iii) failure to carry out an overall comparison of the marks in question, (iv) incorrect assessment of the conceptual comparison of those marks, (v) incorrect assessment of the likelihood of confusion and the unfounded reference to a family of marks, and (vi) incorrect assessment of the conditions relating to the coexistence of two marks.

– The first head of complaint: the incorrect definition of the relevant public

46 The applicant argues, in essence, that the Board of Appeal did not take account of the specific nature of the goods covered by the contested mark when it found that the relevant public also includes the general public, whereas those goods are not common pharmaceutical products and are intended exclusively for health professionals, who administer them to patients suffering from hepatic porphyria. With reference to the judgment of 23 September 2009, GlaxoSmithKline and Others v OHIM — Serono Genetics Institute (FAMOXIN) (T‑493/07, T‑26/08 and T‑27/08, not published, EU:T:2009:355), the applicant argues that, although the goods or services designated by the earlier registration are intended for both the general public and professionals, whereas the goods on which the opposition is based are aimed exclusively at a public composed of professionals, the relevant public for the assessment of the likelihood of confusion is the public composed of professionals only. Those professionals have a high level of attention and a detailed knowledge of the properties and indications of the pharmaceutical products.

48 In that regard, the applicant did not prove that patients suffering from hepatic porphyria are not involved in any way in the choice of treatment that they will undergo, pharmaceutical treatment included, or that they are totally excluded from that choice. Thus, the applicant did not show that the Board of Appeal erred in finding that the relevant public is composed of both health professionals and patients.

49 Moreover, and as EUIPO rightly observes, any error on the part of the Board of Appeal consisting in the inclusion of the general public in the relevant public would have had no impact on the merits of the contested decision. The Board of Appeal based its assessment of the likelihood of confusion between the marks at issue, in paragraphs 42, 53, 54, 60, 63 and 64 of the contested decision, on the perception of a public with a high level of attention, or even on the perception of health professionals (see, to that effect, judgment of 17 February 2017, Construlink v EUIPO — Wit-Software (GATEWIT), T‑351/14, not published, EU:T:2017:101, paragraphs 54 to 58).

– The second head of complaint: incorrect assessment of the visual and phonetic comparison of the marks in question

51 Although the applicant states that, visually, the group of letters ‘normo’ dominates the overall impression of the marks in question, it contends that the Board of Appeal divided the signs artificially and gave inappropriate weight to the group of letters ‘normo’, while de-emphasising the effect produced by the letter ‘n’ and the group of letters ‘sang’. It also attributed too much importance to the second letter ‘n’ of the contested mark, which, in the applicant’s opinion, would not be perceived by health professionals, with the result that its presence could not support a finding of a likelihood of confusion between the marks at issue. The Board of Appeal, it submits, also failed to examine the difference in length of those marks.

52 Regarding the phonetic aspect, the applicant maintains that the Board of Appeal did not sufficiently analyse the differences between the signs, as the identity of the first syllable ‘nor’ is not sufficient to conclude that the marks are similar.

53 The Board of Appeal thus carried out an analytical, not an overall, comparison of the marks at issue, dissecting them according to their constituent parts.

55 It is settled case-law that the overall assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35, and of 16 December 2015, Rotkäppchen-Mumm Sektkellereien v OHIM — Ruiz Moncayo (RED RIDING HOOD), T‑128/15, not published, EU:T:2015:977, paragraph 23).

56 The obligation to carry out an analysis of the overall impression conveyed by the marks in question cannot, however, imply that an examination of each of the individual features of the presentation of that mark in turn should not first be carried out. It may be useful, during the course of the overall assessment, to examine each of the elements that make up the marks concerned (see, in the context of the application of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), judgment of 7 October 2015, The Smiley Company v OHIM (Shape of a smiley with heart-shaped eyes), T‑656/13, not published, EU:T:2015:758, paragraph 27 and the case-law cited).

57 In the present case, as correctly stated by the Board of Appeal in paragraphs 51 and 61 of the contested decision, so far as concerns the visual aspect, the marks at issue share the first five letters ‘n’, ‘o’, ‘r’, ‘m’ and ‘o’, and the letter ‘n’ at the end of the earlier mark and as the penultimate letter of the mark applied for. However, they differ in the group of letters ‘sang’, which features at the end of the mark applied for but is not present in the earlier mark. In so far as it is clear from settled case-law that consumers normally attach more importance to the beginning of words (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81; of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51; and of 25 November 2015, Soprema v OHIM — Sopro Bauchemie (SOPRAPUR), T‑763/14, not published, EU:T:2015:883, paragraph 54), the presence of the same root ‘normo’ in the signs at issue creates a visual similarity.

58 So far as concerns the phonetic aspect, the Board of Appeal correctly stated in paragraphs 52 and 61 of the contested decision that the earlier sign is composed of the two syllables ‘nor’ and ‘mon’, whereas the sign applied for is composed of three syllables ‘nor’, ‘mo’ and ‘sang’, and that the pronunciation of the signs coincides in regard to the group of letters ‘normo’ and the letter ‘n’ and in regard to the first syllables ‘nor’, although it differs in their last syllables. To the extent that the attention of the relevant public is usually directed in particular to the beginning of the word (judgment of 28 November 2013, Lorenz Shoe Group v OHIM — Fuzhou Fuan Leather Plastics Clothing Making (Ganeder), T‑374/09, not published, EU:T:2013:616, paragraph 45), the Board of Appeal’s finding that the signs are phonetically similar to an average degree must be upheld. That finding is supported by the fact that, although the second syllable of the earlier mark (‘mon’) and the second syllable of the mark applied for (‘mo’) are, admittedly, not identical, it is incontrovertible that, in the light of their respective positions within the marks at issue, they give rise to a certain phonetic similarity, which adds to the similarity resulting from the components already referred to by the Board of Appeal.

59 Contrary to the applicant’s claim, the Board of Appeal did not fail, during the course of its examination, to take account of the differences between the marks at issue. First, it concluded in paragraphs 51 and 52 of the contested decision that the signs are similar to an average, not to a high, degree. Second, it follows from the second sentence of paragraph 61 of the contested decision that the Board of Appeal considered that the similarity created by the group of letters ‘normo’ at the beginning of the marks at issue neutralises the differences resulting from the second letter ‘n’ of the earlier mark and the group of letters ‘sang’ of the mark applied for. Thus, the Board of Appeal examined, in detail, the marks at issue, including, necessarily, their length, and based its finding concerning the visual and phonetic similarity on the overall impression conveyed by those marks.

– The third head of complaint: failure to carry out an overall comparison of the marks in question

61 The applicant observes that the contested decision states on several occasions the finding that the marks are ‘similar to an average degree’. The applicant refers in particular to paragraphs 51 and 52 of the contested decision. Nonetheless, it considers that such a ‘description’ cannot be considered equivalent to an assessment of the similarity of the marks at issue and amounts to circumventing an analysis of the similarity of the marks in cases where, in fact, no such similarity exists. The applicant maintains that a finding that two words are ‘similar to an average degree’ on the ground that they have a part of a word in common amounts to an evasion of the requirement to carry out an overall comparison and has a negative impact on the assessment of the likelihood of confusion. When comparing word signs, EUIPO cannot avoid adopting a clear position on the question of whether, on the part of the public, the words are similar, when they are seen and perceived as a whole.

62 Neither EUIPO nor the intervener responds specifically to the arguments submitted in respect of this head of complaint.

63 In this regard, in the event that the applicant is arguing that the expression ‘similar to an average degree’ is an indication that no overall comparison of the marks at issue was carried out, it should be pointed out that the Court has already interpreted that expression, used by the Board of Appeal, as expressing an average degree of similarity of the marks at issue (judgment of 28 September 2016, Kozmetika Afrodita v EUIPO — Núñez Martín and Machado Montesinos(AFRODITA COSMETICS), T‑575/15, not published, EU:T:2016:573, paragraphs 50 and 51). What is more, that expression is used in the Court’s case-law to convey the finding that the marks at issue have an average degree of similarity (judgments of 3 February 2017, Kessel medintim v EUIPO — Janssen-Cilag (Premeno), T‑509/15, not published, EU:T:2017:60, paragraph 69; of 7 July 2017, Axel Springer v EUIPO — Stiftung Warentest (TestBild), T‑359/16, not published, EU:T:2017:477, paragraphs 63, 74 and 78; and of 14 July 2017, Massive Bionics v EUIPO — Apple (DriCloud), T‑223/16, not published, EU:T:2017:500, paragraph 67).

64 In the event, however, that the applicant is claiming that the Board of Appeal could find only that two conflicting marks are either similar or not similar, it must be pointed out that, for the purposes of the application of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative. What is more, it is settled case-law that the similarity of the signs presupposes that, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is to say, the visual, phonetic and conceptual aspects (see judgment of 26 May 2016, Aldi Einkauf v EUIPO — Dyado Liben (Casale Fresco), T‑254/15, not published, EU:T:2016:319, paragraphs 19 and 32 and the case-law cited).

65 That overall assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 26 May 2016, Casale Fresco, T‑254/15, not published, EU:T:2016:319, paragraph 20 and the case-law cited).

66 It follows that EUIPO must not only make a finding as to whether there is a similarity between the marks at issue, or even between the goods or services covered, but must also make a finding as to the degree of that similarity, that is to say, whether it is low, average or high. Only in this way is it possible to carry out a global analysis of the likelihood of confusion, which implies, as previously pointed out, that all of the relevant interdependent factors must be taken into account.

– The fourth head of complaint: incorrect assessment of the conceptual comparison of the marks in question

68 The applicant considers, in essence, that the marks differ conceptually, as the mark applied for NORMOSANG brings to mind the ideas of ‘normality’ and ‘blood’ that are absent from the earlier mark. Those conceptual differences are all the more perceptible by a public consisting exclusively of health professionals with a high level of attention. In that context, the applicant claims that the Board of Appeal’s reasoning is contradictory, recognising, on the one hand, that the mark applied for is likely to remind the relevant public of those two concepts, while concluding, on the other hand, that that sign, since it must be perceived as a whole, has no meaning, with the result that a conceptual comparison is not possible.

70 In this regard, it must be borne in mind that, in accordance with the case-law cited in paragraph 56 above, the obligation to carry out an analysis of the overall impression conveyed by the marks in question cannot, however, imply that an examination of each of the individual features of the presentation of that mark in turn should not first be carried out.

71 It follows that the Board of Appeal made no error when it examined, first, the possible meanings of the elements that make up the contested mark and, subsequently, found that, as a whole, and in the perception of the public concerned by the goods in question, the word ‘normosang’ has no meaning. Although the word elements ‘normo’ and ‘sang’ are vaguely comparable to the Spanish words ‘normal’ and ‘sangre’, meaning ‘normal’ and ‘blood’, the word ‘normosang’ is fanciful as a whole and does not convey a specific idea. Although the applicant repeats the meanings of the components of the mark applied for before the Court, as set out, moreover, by the Board of Appeal, it does not specify, much less demonstrate, what meaning the mark should have as a whole.

72 Thus, the Board of Appeal was able to conclude that a conceptual comparison of the marks at issue is not possible.

73 Moreover, any error on the part of the Board of Appeal in its assessment of the conceptual similarity would have no impact on the overall assessment of the similarity of the marks at issue. Even if the public concerned were to perceive the mark applied for as a whole as referring both to normality and to blood, whereas the earlier mark, for its part, referred to normality only, such a circumstance would not, in the present case, be able, by itself, to counterbalance the similarity established as far as both the visual and the phonetic aspects are concerned. On the contrary, it could accentuate the similarity of the marks at issue by reason of their common reference to normality. It follows that the fourth head of complaint must be rejected.

– The fifth head of complaint: incorrect assessment of the likelihood of confusion and unfounded reference to a family of marks

74 In addition to the arguments relating to the definition of the relevant public, to the failure to carry out an overall comparison of the marks at issue, and to the alleged error with regard to the conceptual comparison of the marks, which have already been rejected in the context of the first, third and fourth heads of complaint of the present plea, so that there is no need to re-examine them, the applicant raises three arguments in support of its claim that the contested decision is vitiated by error in so far as it found that there was a likelihood of confusion between the marks at issue. First, the applicant argues that the reference to the partial identity of the signs in paragraph 64 of the contested decision is incorrect, as the signs are either identical or similar. Secondly, the applicant appears to take the view, in essence, that, to the extent that the Board of Appeal found in paragraphs 51 and 52 of the contested decision that the marks at issue are similar to an average degree, it is contradictory to state, following the comparison of those marks, that they are only similar. Thirdly, the Board of Appeal wrongly found that there is a family of the intervener’s marks containing the prefix ‘normo’.

76 As regards, first, the applicant’s argument concerning the partial identity of the signs, it must be held that, in expressing that identity, the Board of Appeal solely referred to the identity of certain letters and syllables in the two marks at issue, for the purpose of the assessment of their visual and phonetic similarity, carried out previously. It does not follow from any passage in the contested decision that the Board of Appeal attached any other meaning to it. That argument must therefore be rejected.

77 As regards, secondly, the applicant’s argument concerning the contradictory reasoning that allegedly vitiates the contested decision, it suffices to note that, in the present case, to the extent that the Board of Appeal rightly found that the visual and phonetic similarity is average and that a conceptual comparison is not possible, it is beyond doubt that, when it found, in paragraph 55 of the contested decision, that the marks are overall similar, it took the view that that similarity exists to an average degree.

78 As regards, thirdly, the applicant’s argument concerning the existence of a family of the intervener’s marks containing the prefix ‘normo’, as EUIPO rightly contends, the finding in paragraph 64 of the contested decision that there is a family of the intervener’s marks containing the common element ‘normo’ is not part of the Board of Appeal’s reasoning, following which it concluded that there is a likelihood of confusion between the marks at issue, as also evidenced by the reference to the judgment of 16 December 2010, Longevity Health Products v OHIM — Gruppo Lepetit (RESVEROL) (T‑363/09, not published, EU:T:2010:538), which did not concern the issue of families of marks. It appears instead to be a separate finding, an obiter dictum, which merely corroborates the finding of a likelihood of confusion. It follows that, even if the argument were well founded, it could not call into question the finding that there is a likelihood of confusion. It is therefore ineffective.

79 Accordingly, as all the arguments raised in support of the head of complaint alleging that there is no likelihood of confusion have been rejected, the contested decision cannot, contrary to what the applicant contends, be regarded as vitiated by error in that it finds that there is a likelihood of confusion between the marks at issue.

80 Moreover, the Board of Appeal rightly pointed out in paragraph 63 of the contested decision that the fact that the relevant public will be more attentive to the identity of the producer or supplier of the product or service that it wishes to purchase does not mean, however, that that public will examine down to the smallest detail the mark before it, or that it will compare that mark in minute detail to another mark. Even for a public displaying a high level of attention, it remains the case that the average consumer only rarely has the opportunity to compare the different marks directly, but must rely on his imperfect recollection of them (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 31 January 2012, Spar v OHIM — Spa Group Europe (SPA GROUP), T‑378/09, not published, EU:T:2012:34, paragraph 20).

81 Thus, it is necessary to uphold the Board of Appeal’s analysis, which, after finding that the inherent distinctive character of the earlier mark is average, that the goods concerned are identical and that the marks at issue are similar, held that there is a likelihood of confusion, despite the high level of attention shown by the public in question.

– The sixth head of complaint: incorrect assessment of the conditions relating to the peaceful coexistence of the marks at issue

83 The applicant maintains that the absence of a likelihood of confusion is borne out by the fact that the marks coexisted on the Spanish market. In that context, it maintains that the Board of Appeal erred in rejecting its argument that the marks at issue coexisted peacefully before the application for registration of the contested mark was made. First, it argues that, in so far as the territory on which the earlier mark is protected is Spain and the likelihood of confusion is assessed also with regard to that Member State, the Board of Appeal incorrectly examined whether the peaceful coexistence of the marks at issue had been established throughout the European Union. Secondly, it maintains, in essence, that the Board of Appeal did not take account of all the evidence submitted, which shows that the goods bearing the national mark NORMOSANG have been sold in Spain for a decade since its launch in 2000, a fact of which the other party, a manufacturer of pharmaceutical products, could not have been unaware. The peaceful nature of their coexistence is evidenced by the fact that the other party has never brought any action for infringement whatsoever against the applicant’s use of the national mark NORMOSANG. In addition, the applicant explains that, given that pharmaceutical products cannot be placed on the market without prior authorisation by the health authorities, which also check that there is no possibility of confusion between marks, the authorisation and use of the mark NORMOSANG in Spain for over 10 years indubitably establishes that its coexistence with the mark NORMON is the result of an absence of confusion between those marks.

85 In that regard, it should be borne in mind that, according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgments of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 82; of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 70; and of 6 April 2017, Policolor v EUIPO — CWS-Lackfabrik Conrad W. Schmidt (Policolor), T‑178/16, not published, EU:T:2017:264, paragraph 66). However, in order for the coexistence of two marks to have such consequences, certain conditions must be met.

86 The coexistence of two marks within the meaning of the case-law cited above must be based on the absence of a likelihood of confusion on the part of the public concerned, which implies that that public is aware of the fact that the marks belong to different undertakings (Opinion of Advocate General Mazák in Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:49, point 29; see also, in the context of the assessment of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), judgment of 22 September 2011, BudějovickýBudvar, C‑482/09, EU:C:2011:605, paragraph 81; order of 13 January 2015, Asos v OHIM, C‑320/14 P, not published, EU:C:2015:6, paragraph 20; judgments of 11 May 2005, Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, EU:T:2005:169, paragraph 86, and of 14 November 2007, Castell del Remei v OHIM — Bodegas Roda (CASTELL DEL REMEI ODA), T‑101/06, not published, EU:T:2007:340, paragraph 76).

87 Any argument based on coexistence requires prior demonstration, inter alia, of genuine use of the mark on which the applicant relies in the relevant territory, namely the territory in which the earlier mark is protected (see judgments of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 81 and the case-law cited, and of 6 April 2017, Policolor, T‑178/16, not published, EU:T:2017:264, paragraph 67 and the case-law cited).

88 That coexistence must also be peaceful. Thus, any dispute between the proprietors of the earlier marks precludes a finding of coexistence (see judgment of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 82 and the case-law cited). However, the mere fact that the proprietor of an earlier mark has failed to react to the use of an identical or similar mark by a third party, registration of which as an EU mark is then sought by that third party, does not, as such, in the context of opposition proceedings, allow it to be concluded that there is no likelihood of confusion (judgment of 14 November 2007, CASTELL DEL REMEI ODA, T‑101/06, not published, EU:T:2007:340, paragraph 78).

89 The coexistence of two marks must be demonstrated by the proprietor or the applicant for registration of the contested mark, during the proceedings before EUIPO concerning relative grounds for refusal, who may, for the purpose of demonstrating that that coexistence is based on the absence of any likelihood of confusion, advance a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time of filing the application for registration of the contested mark is particularly relevant (see judgment of 30 June 2015, VIÑA ALBERDI, T‑489/13, EU:T:2015:446, paragraph 80 and the case-law cited).

90 The present head of complaint must be addressed in the light of those principles.

91 As acknowledged by EUIPO, the Board of Appeal erred when it required the applicant to provide evidence throughout the European Union of the peaceful coexistence on which it relied. To the extent that it specified in paragraph 39 of the contested decision that the relevant territory is Spain, the earlier mark being Spanish, it was in respect of that territory that the conditions relating to that coexistence had to be examined.

92 However, that error is not of such a kind as to lead to the annulment of the contested decision.

93 The Board of Appeal rejected the argument based on the coexistence of the marks also on the ground that the applicant had not shown that the marks in question coexisted on the market without there being any likelihood of confusion between them.

94 However, the evidence adduced by the applicant did not in any way allow corroboration of its assertion that there is no likelihood of confusion between the two marks on Spanish territory.

95 In that regard, first, it must be noted that only items 16 to 18 in Annex A 7 to the application related to Spanish territory.

96 Secondly, all of the evidence in that annex concerned only the features of the product in question and its use, the countries where it is sold and its sales volumes in Spain between 2003 and 2014, but did not address the manner in which the relevant public was exposed to the marks at issue on the market and, in particular, did not show that that public recognised the two marks in question and was aware that they belong to different undertakings.

97 Thirdly, the sales volumes, not proved by the applicant to exceed a total of EUR 10 000 per year, must be regarded as being very low on the scale of a Member State such as Spain. This is a fortiori the case as that product was sold, according to the invoices presented, at a price of between EUR 1 631 and EUR 2 121 per unit, and that the annual sales of that product in Spain therefore did not exceed five units. Those circumstances give weight to the intervener’s assertion that it was not even aware of the existence of goods bearing that mark, with the result that, in any event, no finding can be made that the marks coexisted peacefully.

98 Furthermore, the applicant’s argument that the granting of marketing authorisations for the goods sold by it is evidence of the absence of confusion between the marks at issue, and therefore of peaceful coexistence within the meaning of the case-law, cannot be accepted. In the first place, the competent authorities in this matter are not part of the public concerned, which is composed of health professionals, that is to say, those who prescribe or administer the medicinal product in question, and of patients. In the second place, EUIPO is fully entitled to maintain that those authorisations have no bearing on the assessment of likelihood of confusion in connection with the application of Regulation No 207/2009 (see, to that effect, judgment of 22 September 2005, Alcon v OHIM — Biofarma (TRAVATAN), T‑130/03, EU:T:2005:337, paragraph 79).

99 It follows from all of the foregoing that the sixth head of complaint must be rejected, with the result that the second plea must be rejected and the action dismissed in its entirety.

100 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

101 As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, as applied for in their respective pleadings.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Recordati Orphan Drugs v EUIPO - Laboratorios Normon (NORMOSANG) (Intellectual, industrial and commercial property - Judgment) [2018] EUECJ T-103/17 (09 March 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T10317.html Cite as: EU:T:2018:126, [2018] EUECJ T-103/17, ECLI:EU:T:2018:126

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