August Wolff v EUIPO - Faes Farma (DermoFaes Atopimed) (EU trade mark - Judgment) [2019] EUECJ T-642/18 (28 November 2019)

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(EU trade mark — Opposition proceedings — Application for EU word mark DermoFaes Atopimed — Earlier EU word mark Dermowas — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Dr. August Wolff GmbH & Co. KG Arzneimittel, established in Bielefeld (Germany), represented by A. Thünken, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

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

Faes Farma, SA, established in Lamiaco-Leioa (Spain), represented by A. Vela Ballesteros and S. Fernandez Malvar, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 July 2018 (Case R 1365/2017-2) relating to opposition proceedings between Dr. August Wolff and Faes Farma,

composed, at the time of deliberation, of D. Gratsias, President, G. De Baere and R. Frendo (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 29 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 5 February 2019,

having regard to the response of the intervener lodged at the Court Registry on 13 March 2019,

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 2 February 2016, the intervener, Faes Farma, SA, 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 Classes 1, 3 and 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, for each of those classes, to the following description:

– Class 1: ‘Chemicals used in science, agriculture, horticulture and forestry; artificial fertilizers and chemical substances for preserving foodstuffs; chemical preparations for cosmetics’;

– Class 3: ‘Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’;

– Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2016/52 of 16 March 2016.

5 On 13 June 2016, the applicant, Dr. August Wolff GmbH & Co. KG Arzneimittel, filed a notice of opposition to registration of the mark applied for, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001). The opposition was directed against:

– part of the goods in Class 1 covered by the application for registration, namely ‘chemical preparations for cosmetics’;

– all the goods in Classes 3 and 5 covered by that application and listed in paragraph 3 above.

6 The opposition was based on Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and the EU word mark Dermowas, registered on 29 October 2007 under No 5440111. The goods covered by that mark were in Classes 3 and 5 and corresponded, for each of those classes, to the following description:

– Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; fungicides’.

7 By decision of 9 June 2017, the Opposition Division upheld the opposition in part and rejected the registration of the mark applied for in respect of the following goods:

– Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.

8 Moreover, the Opposition Division rejected the opposition for the goods in Class 1 and for ‘materials for stopping teeth’ in Class 5.

9 On 23 June 2017, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), the intervener filed a notice of appeal against the decision of the Opposition Division in so far as it had rejected the application for registration in respect of the goods in Classes 3 and 5 listed in paragraph 7 above.

10 By decision of 11 July 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. In essence, the Board of Appeal based its decision on the fact that the goods concerned in Class 3 were directed at the general public, whose level of attention is average. It also relied on the fact that the goods concerned in Class 5 were directed at professionals in the medical and pharmaceutical sectors, as well as the general public, since the level of attention of those two groups is high in the present case. Next, the Board of Appeal found that the prefix ‘dermo’, common to the marks at issue, had only a very weak distinctive character and that a descriptive or generic element such as ‘dermo’ should be given little importance; therefore, the consumer would essentially focus his attention on the other elements. Consequently, the Board of Appeal held that there was no likelihood of confusion between the marks at issue given the different endings ‘was’ and ‘faes’ of their first elements and the presence of the additional element ‘atopimed’ in the mark applied for.

– order EUIPO and the intervener to pay the costs, including those incurred before EUIPO.

– order the applicant to pay the costs, including those incurred before EUIPO.

14 The applicant annexed to its application an annex numbered ‘A5’. That annex is a reproduction of an extract of a page of the Wikipedia website which refers to the letter ‘æ’ of the Danish alphabet. According to the applicant, that extract proves that, in Denmark, the ending ‘faes’ of the mark applied for is pronounced as a single syllable, contrary to the Board of Appeal’s finding.

15 EUIPO however rightly contends that that evidence was not produced in the course of the proceedings before EUIPO and that it is therefore inadmissible.

16 Although the contested evidence consists merely of an extract of a website, it cannot be taken into consideration since it was produced for the first time before the Court. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned evidence must be excluded and there is no need to assess its probative value (see, by analogy, judgment of 25 November 2014, Brouwerij Van Honsebrouck v OHIM — Beverage Trademark (KASTEEL), T‑375/12, not published, EU:T:2014:987, paragraph 17).

17 In support of its claim for annulment of the contested decision, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It disputes the absence of a likelihood of confusion in the present case and invokes, for that purpose, two complaints against the contested decision alleging, first, an incorrect assessment of the level of attention of the relevant public and, second, the similarity of the signs at issue.

18 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the 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.

19 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 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).

20 It is in the light of those considerations that the reasons for the contested decision, taking account of the applicant’s complaints, must be examined, starting by the question of the relevant public and its level of attention.

21 In paragraph 24 of the contested decision, the Board of Appeal considered that the goods concerned in Class 3 were directed at average consumers, whose level of attention was average. As regards the goods in Class 5, it considered that some were directed at the general public and others at a specialised public composed of professionals in the medical and pharmaceutical sectors, acknowledging, in both cases, that the level of attention of the interested parties would be high, since the goods in question were goods affecting health.

22 The applicant does not contest that the goods in question are directed at the general public and professionals. By contrast, it submits that the relevant public’s level of attention is merely average. It claims that the assessment of the likelihood of confusion must be based on the perception of the part of the public displaying the lowest degree of attentiveness. In the present case, that public is the general public, whose level of attention is clearly lower than that of professionals in the health sector. As regards, in particular, the goods in Class 5, the applicant maintains that the level of attention of the general public is at most average, since most of those goods are everyday consumer goods and can be bought without a prescription.

23 It should be noted, first of all, that by claiming that the attention of the relevant public is average, the applicant does not call in question the assessment of the Board of Appeal as regards the goods concerned in Class 3.

24 As regards the goods in Class 5, it must be noted that the applicant does not contest that health professionals pay a high level of attention to goods likely to affect health. It merely challenges the Board of Appeal’s assessment that the general public would pay those goods the same level of attention.

25 As the applicant claims, when the relevant public is made up of two categories of consumers each having a different level of attention, the public with the lower level of attention must be taken into consideration (judgment of 30 January 2019, Bekat v EUIPO — Borbet (ARBET), T‑79/18, not published, EU:T:2019:39, paragraph 23).

26 Nevertheless, it is apparent from the case-law that, in the pharmaceutical, medical and veterinary fields, the general public, much like specialists, displays a heightened degree of attentiveness, even in respect of goods issued without a prescription, since they affect, to a greater or lesser degree, health (see, to that effect, judgments of 7 May 2015, Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraphs 23 and 24, and of 20 September 2018, Kwizda Holding v EUIPO — Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 26). Similarly, dietetic substances adapted for medical use may be regarded as products to which a higher than average level of attention is paid (see, to that effect, judgment of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 46).

27 In addition, the applicant does not dispute that the relevant public shows a high level of attention as regards preparations for destroying vermin, fungicides and herbicides owing to the health risks they may present because of their biocidal properties. The case-law, moreover, confirms this (see, to that effect, judgment of 13 May 2015, Ferring v OHIM — Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraphs 38 and 39).

28 In the light of the foregoing, the Board of Appeal’s findings regarding the relevant public and its level of attention must therefore be confirmed.

29 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

30 In the present case, and as a preliminary issue, it must be noted that the Board of Appeal considered, in paragraphs 33 to 36 of the contested decision, that the element ‘dermo’, appearing at the beginning of the two marks at issue, is perceived by the relevant public as a reference to ‘skin’ and that, because of the nature of the goods concerned, that common element’s distinctive character was very weak. The applicant does not dispute that assessment. Next, in paragraph 37 of the contested decision, the Board of Appeal considered that the element ‘atopimed’, which appears in second position in the trade mark applied for, is perceived by the professional public as consisting of the element ‘atopi’, indicating a predisposition towards developing certain allergic reactions, and the element ‘med’, which refers to the medical field. According to the Board of Appeal, ‘atopimed’ possesses a weak distinctive character having regard to the goods concerned in Class 5. Finally, in paragraph 38 of the contested decision, the Board of Appeal held that the element ‘atopimed’ lacks a clear meaning for the general public. The applicant also does not contest those findings as far as concerns the element ‘atopimed’.

31 In paragraphs 40 to 42 of the contested decision, the Board of Appeal considered that the element ‘dermo’, common to the marks at issue, did not produce a lasting impression among the relevant public owing to its very weak distinctive character. Consequently, the Board of Appeal held that consumers’ attention would focus more on the endings ‘was’ and ‘faes atopimed’ of the marks at issue. In that regard, the Board of Appeal observed that those elements differed in the letters ‘w’, ‘f’ and ‘e’ and the different order of the common letters ‘a’ and ‘s’. Last, it noted that there was no equivalent of the second element of the mark applied for, ‘atopimed’, in the earlier mark. Consequently, the Board of Appeal concluded that the marks at issue were visually similar only to a low degree.

32 The applicant, for its part, claims that the common element ‘dermo’ determines, to a significant extent, the overall impression produced by the marks at issue, owing to its length and the fact that it appears at the beginning of those marks. It also states that the ending ‘faes’ differs from ‘was’ only by the letters ‘f’ and ‘e’; accordingly, those two elements are visually similar. As for the element ‘atopimed’, it is disregarded because of its weak distinctive character for the professional public. Consequently, the applicant takes the view that the signs display a ‘high degree’ of visual similarity, rather than a ‘low degree’ of similarity as indicated by the Board of Appeal in the contested decision.

33 According to the case-law, consumers normally attach more importance to the first part of trade marks. However, it has also been held in the case-law that that consideration cannot apply in all cases. When the element appearing in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue, the relevant public will, indeed, attach more importance to their final part, which is the most distinctive (see judgment of 19 November 2014, Evonik Oil Additives v OHIM — BRB International (VISCOTECH), T‑138/13, not published, EU:T:2014:973, paragraphs 68 and 69).

34 In the present case, the marks at issue begin with the same element ‘dermo’. However, that common prefix must be regarded as weak in the overall impression produced by those marks, for the reason indicated in paragraph 30 above. Therefore, due to that weak distinctive character, the impact of that element will be marginal and the attention of the relevant public will focus more on the ending of both marks, rather than on their beginning.

35 As EUIPO contends, the endings ‘was’ and ‘faes’ differ visually in their first letters ‘w’ and ‘f’, the letter ‘e’ and the different position of the common letter ‘a’. In addition, referring to the judgment of 23 May 2007, Henkel v OHIM — SERCA (COR) (T‑342/05, not published, EU:T:2007:152, paragraph 42), EUIPO rightly argues that since the endings in question are short, those differences will be immediately perceived by the relevant public.

36 Furthermore, even though the element ‘atopimed’ has a weak distinctive character for professionals, it is capable of attracting the attention of the relevant public visually because it is added to the first element ‘dermofaes’.

37 Last, overall, the mark applied for differs from the earlier mark in that it consists of two words and a greater number of letters.

38 It follows from the foregoing that the Board of Appeal correctly considered that the marks at issue displayed only a low degree of visual similarity.

39 In paragraph 43 of the contested decision, the Board of Appeal considered, as it did in relation to the visual comparison, that due to the very weak distinctive character of the element ‘dermo’, the relevant public would focus on the ending of the signs at issue. It also noted that the earlier mark was pronounced in three syllables whereas the mark applied for consisted of eight.

40 The applicant maintains, for its part, that the common prefix ‘dermo’ should have been given greater weight in the comparison of the marks at issue. It also states that the endings ‘was’ and ‘faes’ are phonetically similar, at least for German and Danish speakers, because the letters ‘w’ and ‘f’ are labiodental sounds and because, in German and Danish, the letter sequence ‘ae’ is pronounced as a single syllable and not two as stated by the Board of Appeal. As for the element ‘atopimed’, it should be ignored since it has a weak distinctive character for the professional public.

41 Nevertheless, it must be noted that the first two syllables of the marks at issue, namely ‘der’ and ‘mo’ are identical in each of those marks and that they are pronounced in the same way. However, it must be accepted that that identity will not produce any lasting phonetic impression on the relevant public, due to the weak distinctive character of the prefix ‘dermo’ (see paragraphs 30 and 34 above). That public will therefore pay more attention to the endings of those marks (see, to that effect, judgment of 19 November 2014, VISCOTECH, T‑138/13, not published, EU:T:2014:973, paragraph 75).

42 As regards that ending, even if the letters ‘w’ and ‘f’ correspond to labiodental sounds in German and in Danish, as the applicant argues, the fact remains that those sounds differ for the speakers of those languages, one being that of a voiced consonant and the other that of a voiceless consonant. Next, although the applicant rightly claims that, in the aforementioned two languages, the letter sequence ‘ae’ will be pronounced as a single syllable, it nevertheless maintains in its application that the sound of that syllable will be comparable in those languages to the sound ‘e’ in the English word ‘very’ and the sound ‘ä’ in German. Therefore, it is apparent from the applicant’s line of argument itself that that sound differs from the sound ‘a’ in ‘was’.

43 Moreover, the earlier mark only consists of three syllables, whereas the mark applied for includes seven; that is more than twice as many. Such a difference cannot be held to be insignificant even if, having regard to the goods concerned in Class 5, the element ‘atopimed’ has a weak distinctive character for professionals.

44 It follows from the foregoing that the Board of Appeal correctly considered that the marks at issue displayed only a low degree of phonetic similarity.

45 In paragraphs 44 to 47 of the contested decision, the Board of Appeal considered that the common prefix ‘dermo’ of the marks at issue made reference to the skin. Next, it found that the element ‘faes’ referred to ‘phases’ for the Estonian, Latvian and Lithuanian public, whereas the element ‘was’ could be understood as the verb ‘to be’ in the past tense by the English-speaking public and as the word ‘what’ by the German-speaking public since those elements had no meaning for the rest of the relevant public. As for the element ‘atopimed’ of the mark applied for, the Board of Appeal considered that it would be associated with the medical terms ‘atopy’ and ‘medical’ by professionals. Ultimately, the Board of Appeal found that the marks at issue were conceptually similar on account of the common element ‘dermo’ but that that similarity had only a minor impact given that it was an element which had a very weak distinctive character for the goods at issue.

46 The applicant however maintains that the common prefix ‘dermo’ will evoke the notion of ‘skin’ in the mind of the relevant public and that it cannot be ignored as it is the only element of the words ‘dermowas’ and ‘dermofaes’ with a meaning for the part of the relevant public for which the elements ‘was’ and ‘faes’ have no conceptual meaning. In addition, the Board of Appeal incorrectly considered that the element ‘was’ referred to the term ‘what’ in German. No one would associate ‘was’ with ‘what’ where ‘was’ is used with the element ‘dermo’. Last, the element ‘atopimed’ of the mark applied for reinforces the conceptual similarity of the signs at issue, in that, by alluding to medical treatment and a predisposition towards developing certain allergic reactions, it makes strong reference to the element ‘dermo’. Accordingly, the marks at issue have a high degree of conceptual similarity.

47 It must be pointed out that, 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, he will break it down into word elements which, for him, suggest a specific meaning or which resemble words known to him. Furthermore, it is possible for the relevant consumer to break down a word sign even if only one of the elements making up that sign is familiar to him (see judgment of 27 September 2018, TenneT Holding v EUIPO — Ngrid Intellectual Property (NorthSeaGrid), T‑70/17, not published, EU:T:2018:611, paragraph 138 and the case-law cited).

48 Thus, in the present case, the fact that the relevant public will recognise the prefix ‘dermo’ which is common to the marks at issue and which refers to the idea of skin is not disputed. However, it should be recalled that that prefix has only a weak distinctive character because of its relationship with the products concerned (see paragraph 30 above).

49 Next, the fact that part of the relevant public will not give any meaning to the suffix ‘was’ in the earlier mark is uncontested. Moreover, as regards the English-speaking part of the relevant public which understands the element ‘was’ as being, by itself, the auxiliary ‘to be’ in the past tense and as regards the German-speaking part of the public which may identify it with the word ‘what’, it must be accepted, as did the applicant, that the juxtaposition of that suffix to ‘dermo’ is capable of altering those meanings.

50 As for the suffix ‘faes’, whereas, by itself, it evokes ‘phases’ for the Estonian, Latvian and Lithuanian public, its juxtaposition with the element ‘dermo’ completely distorts that meaning. In addition, it does not evoke any concept for other parts of the relevant public.

51 It must therefore be accepted that no conceptual comparison may be carried out as far as concerns the part of the relevant public for which the suffixes ‘was’ and ‘faes’ have no meaning (see, to that effect, judgments of 22 March 2007, Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, EU:T:2007:96, paragraph 101, and of 6 September 2013, Leiner v OHIM — Recaro (REVARO), T‑349/12, not published, EU:T:2013:412, paragraph 35). For that public, those suffixes are neither conceptually similar nor different.

52 Last, as regards the element ‘atopimed’, the Board of Appeal rightly observed, in paragraph 45 of the contested decision, that, for the relevant professional public, the element ‘atopimed’ of the mark applied for, which has no equivalent in the earlier mark, is associated with the medical terms ‘atopy’ and ‘medical’ and, to that extent, the marks at issue were not conceptually similar. As the Board of Appeal rightly stated, the element ‘atopi’ indicates a predisposition towards developing certain allergic reactions (see paragraph 30 above). Consequently, the combination of that element with the element ‘med’ may suggest a medicinal product against allergies. As for the general public, it is unlikely that it understands that meaning. The applicant, moreover, does not contest that point strongly. That public will most likely perceive the term ‘atopimed’ as an imaginary word or as a meaningless neologism. Therefore, as regards the general public, it must be found that, as far as that term is concerned, a conceptual comparison is not possible.

53 In the light of the foregoing, despite the findings in paragraphs 49 and 50 above, it must be concluded, as did the Board of Appeal, that the marks at issue have a conceptual similarity restricted to the element ‘dermo’, but that that similarity has only a limited impact given that it is an element which has a weak distinctive character for the goods at issue.

54 The Board of Appeal considered, in paragraph 47 of the contested decision, that, overall, the marks at issue were visually and phonetically similar only to a low degree and conceptually similar merely so far as concerns the common element ‘dermo’, since that similarity itself had only a limited impact on the overall comparison.

55 The applicant takes the view, for its part, that, in any event, the contested decision is based on an incorrect weighting of all the elements taken into account in the assessment of the likelihood of confusion. Accordingly, although the Board of Appeal considered that the relevant public would focus its attention on the elements other than the common element ‘dermo’, it did not take into account the fact that the syllables ‘was’ and ‘faes’ have a high degree of similarity, in particular for Czech, Lithuanian, German and Danish consumers. Similarly, the Board of Appeal disregarded the fact that the elements ‘dermowas’ and ‘dermofaes’ have seven letters in common and that they consist of three syllables. Furthermore, the Board of Appeal did not take into account the fact that the element ‘atopimed’ cannot offset the similarities between ‘dermowas’ and ‘dermofaes’ because of its weak distinctive character.

56 However, it is apparent from the findings in paragraphs 35, 38, 42 and 44 above that the Board of Appeal correctly found that the marks at issue were visually and phonetically similar only to a low degree in the light of, inter alia, the differences between the elements ‘was’ and ‘faes’.

57 Furthermore, whereas, conceptually, it follows from paragraph 37 of the contested decision that the element ‘atopimed’ has only a weak distinctive character with regard to the goods in Class 5, for the professional part of the relevant public, the marks at issue still differ in that element because that public will associate it with a predisposition towards developing allergic reactions and the field of medicine. Moreover, it must be held that, whereas the general public will probably perceive the term ‘atopimed’ as an imaginary word or a meaningless neologism, the element ‘atopi’ should however draw and hold its attention because it has no clear meaning.

58 Furthermore, contrary to the applicant’s argument, the element ‘atopimed’ is such as to offset the visual and phonetic similarities between the elements ‘dermowas’ and ‘dermofaes’ of the marks at issue. While the earlier mark consists only of eight letters and three syllables, the mark applied for consists of 17 letters and more than twice the number of syllables.

59 Admittedly, as the applicant claims in the global assessment of the likelihood of confusion, account must be taken of the fact that the relevant consumer only rarely has a chance to compare the various marks directly and must therefore rely on his imperfect recollection of them (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35, and of 16 January 2018, Starbucks v EUIPO — Nersesyan (COFFEE ROCKS), T‑398/16, not published, EU:T:2018:4, paragraph 45).

60 However, it cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. Thus, in accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or on the conditions under which the goods or services covered by them are marketed (see judgment of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER), T‑349/15, not published, EU:T:2016:677, paragraph 53 and the case-law cited).

61 In the present case, it must be observed that the applicant invokes, in that regard, the alleged high degree of visual, phonetic and conceptual similarity of the marks at issue; that line of argument has been refuted in paragraphs 33 to 38, 41 to 44 and 48 to 53 above.

62 Consequently, since the similarities found are weak and the public’s attention is either average or high, it must be accepted that the Board of Appeal rightly found that there was no likelihood of confusion, despite the partial identity and partial similarity of the goods at issue.

63 In the light of the foregoing, it must be held that the applicant’s single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 is unfounded.

2. The applicant’s second head of claim and the intervener’s second head of claim

65 By its second head of claim, the applicant requests that the Court uphold its opposition and reject the trade mark application lodged before EUIPO by the intervener. Conversely, by its second head of claim, the intervener requests that the Court uphold the contested decision and reject the applicant’s opposition.

66 It should be recalled that in a review carried out by the General Court under Article 72(3) of Regulation 2017/1001, the Court may annul or alter the decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 72(2) of that regulation (see, to that effect, judgment of 30 April 2019, Lupu v EUIPO — Et Djili Soy Dzhihangir Ibryam (Djili DS), T‑558/18, not published, EU:T:2019:268, paragraph 38 and the case-law cited).

67 As the single plea in law relied on by the applicant in support of its application for annulment must be rejected, as established in paragraph 63 above, the contested decision is not vitiated by any of the grounds of unlawfulness set out in Article 72(2) of Regulation 2017/1001. It is therefore not appropriate to grant the applicant’s request to uphold its opposition and reject the trade mark application filed by the intervener.

68 In the light of the foregoing considerations, the applicant’s second head of claim must be rejected, as must, consequently, the action in its entirety.

69 Last, there is no need to rule separately on the intervener’s second head of claim, since ‘upholding’ the contested decision is equivalent to dismissing the action (see 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).

70 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.

71 In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, the form of order sought by EUIPO and the intervener must therefore be granted and the applicant ordered to pay the costs incurred by EUIPO and the intervener in the proceedings before the Court.

72 The intervener has also claimed that the applicant should be ordered to pay the costs that it incurred in the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (judgment of 25 April 2018, Perfumes y Aromas Artesanales v EUIPO — Aromas Selective (Aa AROMAS artesanales), T‑426/16, not published, EU:T:2018:223, paragraph 125).

2. Orders Dr. August Wolff GmbH & Co. KG Arzneimittel to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Faes Farma, SA, including those necessarily incurred by Faes Farma, SA, before the Board of Appeal of EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> August Wolff v EUIPO - Faes Farma (DermoFaes Atopimed) (EU trade mark - Judgment) [2019] EUECJ T-642/18 (28 November 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T64218.html Cite as: ECLI:EU:T:2019:819, EU:T:2019:819, [2019] EUECJ T-642/18

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