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

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

16 July 2014 (*)

(Community trade mark - Opposition proceedings - Application for the Community word mark FEMIVIA - Earlier Community word mark FEMIBION - International registration designating the European Community of the earlier figurative mark femibion - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-324/13,

Endoceutics, Inc., established in Quebec (Canada), represented by M. Wahlin, lawyer,

applicant,

v

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

defendant,

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

Merck KGaA, established in Darmstadt (Germany), represented by M. Best, U. Pfleghar and S. Schäffner, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 April 2013 (Case R 1021/2012-4), concerning opposition proceedings between Merck KGaA and Endoceutics, Inc.,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 17 June 2013,

having regard to the response of OHIM lodged at the Court Registry on 3 October 2013,

having regard to the response of the intervener lodged at the Court Registry on 1 October 2013,

further to the hearing on 10 April 2014,

gives the following

Judgment

 Background to the dispute

1        On 20 September 2010, the applicant, Endoceutics, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The trade mark in respect of which registration was sought is the word sign FEMIVIA.

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

4        The Community trade mark application was published in Community Trade Marks Bulletin No 219/2010 of 22 November 2010.

5        On 22 February 2011, the intervener, Merck KGaA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier rights:

-        Community word mark FEMIBION, registered on 3 January 2000 under No 898 924 in respect of goods in Class 5 and corresponding to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants’;

-        international registration of the figurative mark femibion designating the European Community, registered on 14 November 2008 under No 992 201 in respect of goods in Classes 5, 29 and 30 and corresponding, for each of those classes, to the following description:

-        Class 5: ‘Pharmaceutical preparations; dietetic preparations on the basis of vitamins, minerals, trace elements, oils and fats, either apart or combinations thereof’;

-        Class 29: ‘Dietetic preparations or food supplements (not for medical use) on the basis of protein with addition of vitamins, minerals, probiotics, either apart or combinations thereof, included in this class’;

-        Class 30: ‘Dietetic preparations or food supplements (not for medical use) on the basis of carbohydrates with addition of vitamins, minerals, salts, either apart or combinations thereof, included in this class’

as reproduced below:

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

8        The applicant asked the intervener to provide proof of use of the earlier word mark on which the opposition was based. The intervener provided various documents with a view to establishing use of the earlier mark.

9        On 2 April 2012, the Opposition Division rejected the opposition in its entirety. It found, in essence, that there was no likelihood of confusion between the marks at issue inasmuch as the similarity of the signs at issue is primarily based on the prefix ‘femi’ which has a weak distinctive character for the goods covered by those marks. Given that the opposition was rejected, the Opposition Division did not examine the documents intended to prove use of the earlier Community trade mark.

10      On 25 May 2012, the intervener filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.

11      By decision of 15 April 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal, annulled the decision of the Opposition Division and rejected the Community trade mark application. The Board of Appeal examined the mark applied for and the figurative mark registered under earlier international arrangements which did not require proof of use. It then found, in essence, that there was a likelihood of confusion between the marks at issue on the part of the relevant Spanish-speaking public because of the identity of the goods, the average visual similarity and high degree of phonetic similarity of the signs, and the average degree of distinctiveness of the earlier figurative mark. As regards the prefix ‘fem’, it took the view that it would not be perceived as being descriptive for the goods in question.

 Forms of order sought

12      The applicant claims that the Court should:

-        annul the contested decision;

-        reject the opposition brought by the intervener and grant the application for registration of the trade mark applied for;

-        order the intervener to pay the costs.

13      OHIM and the intervener contend that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15      The applicant disputes the findings of the Board of Appeal relating to the existence of a likelihood of confusion between the marks at issue. It claims, in particular, that the prefix ‘femi’ is descriptive for goods in Class 5 and that, consequently, the comparison of the signs ought to be made on the basis of the distinctive and dominant components, namely ‘bion’ and ‘via’ respectively. The applicant alleges that the Board of Appeal also erred in basing the assessment of the likelihood of confusion on the Spanish-speaking public instead of the English-speaking public. In addition, the applicant submits that the opposition based on the earlier Community word mark must be rejected since the intervener has not shown genuine use of that mark.

16      OHIM and the intervener dispute the applicant’s arguments.

17      As a preliminary point, it should be borne in mind that, in order to find that there existed a likelihood of confusion between the marks at issue, the Board of Appeal examined the mark applied for and the international registration of the earlier figurative mark. The Board of Appeal did not, as is apparent from paragraphs 10 and 25 of the contested decision, examine whether there was a likelihood of confusion between the mark applied for and the earlier Community mark. It follows that, at this stage, there is no need to examine whether genuine use of the earlier Community mark has been proved, and the applicant’s complaint must therefore be rejected.

18      According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union.

19      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

20      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

21      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II-5409, paragraph 76 and the case-law cited).

22      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 Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

23      The present action must be examined in the light of the abovementioned principles.

24      With regard to the relevant public, the Board of Appeal considered that it consisted of the public at large and professionals from the medical sector in all the Member States, who displayed a high degree of attentiveness. However, the Board of Appeal based its assessment on the relevant Spanish-speaking public.

25      The applicant criticises the Board of Appeal for examining whether there was a likelihood of confusion between the marks at issue in relation to the Spanish-speaking public. It argues that, in so far as the earlier mark is a combination of the English words ‘feminine’ and ‘tribion’, the assessment of whether there is a likelihood of confusion should be carried out in relation to the English-speaking public.

26      It must be noted, as the Board of Appeal did, that, in so far as the marks at issue cover all EU Member States, the relevant public consists in the present case of professionals and average European consumers. The relevant public should not therefore be limited to the English-speaking public.

27      As to the assessment of the likelihood of confusion in the present case in relation to the Spanish-speaking public, it should be borne in mind that the principle laid down in Article 7(2) of Regulation No 207/2009, according to which it suffices, in order for registration of a trade mark to be refused, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) of that regulation (see the judgment of 22 March 2007 in Case T-322/05 Brinkmann v OHIM - Terra Networks (Terranus), not published in the ECR, paragraph 29 and the case-law cited). It follows that, in so far as the Board of Appeal was right to find that there existed a likelihood of confusion between the marks at issue on the part of the relevant Spanish-speaking public, it could, for reasons of procedural economy, restrict the assessment of such a likelihood of confusion to that part of the relevant public.

28      With regard to the comparison of the goods in question, the Board of Appeal rightly considered, in paragraph 11 of the contested decision, that they were identical, in so far as the figurative mark registered under earlier international arrangements was registered inter alia for ‘pharmaceutical preparations’ in Class 5, whereas the mark applied for covered ‘pharmaceutical preparations for the prevention and treatment of medical conditions related to the menopause’ also in Class 5. In so far as those goods covered by the earlier figurative mark include those covered by the mark applied for, they must be considered to be identical. The applicant does not dispute that conclusion.

 Comparison of the signs

29      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, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global 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 (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

30      In the present case, the mark applied for is a word mark consisting of the element ‘femivia’. As regards the figurative mark registered under earlier international arrangements, it consists of the word element ‘femibion’ written in a slightly stylised typeface. The first letters ‘f’, ‘e’ and ‘m’ are written in italics, and there is a cross below the ‘o’, so that that letter resembles the Venus symbol, the symbol for a female organism or a woman. Lastly, a thin arc appears above the word element.

31      With regard to the distinctive character of the prefix ‘fem’, which forms part of the mark applied for and the figurative mark registered under earlier international arrangements, the Board of Appeal, while having regard to the fact that the Spanish word ‘femenino’ means ‘feminine’, considered, in paragraph 14 of the contested decision, that it would not be perceived as being descriptive for the goods covered by the marks at issue.

32      The applicant submits that the prefix ‘femi’ is commonly used, in relation to inter alia pharmaceutical preparations, to indicate that those goods are intended for females. So far as concerns pharmaceutical preparations for the treatment of diseases affecting only women, that prefix will clearly be perceived as being an abbreviation which derives from the Latin word ‘femina’. The applicant therefore considers that the assessment of the likelihood of confusion between the marks at issue must be focused on the suffixes of the signs at issue, namely ‘via’ and ‘bion’ respectively.

33      In that regard, it should be borne in mind that the goods covered by the mark applied for are intended for the prevention and treatment of medical conditions related to the menopause, by which only women are affected. Accordingly, in the context of the goods in question, or at least the goods covered by the mark applied for, the prefix ‘fem’ will clearly be understood by the relevant Spanish-speaking public as being an abbreviation of the Spanish word ‘femenino’, which describes the intended purpose of the goods in question.

34      While it is true in that regard that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see the judgment of 10 July 2012 in Case T-135/11 Clorox v OHIM - Industrias Alen (CLORALEX), not published in the ECR, paragraph 27 and the case-law cited).

35      It follows that, in the present case, the prefix ‘fem’ has a weak distinctive character for the goods covered by the marks at issue on account of its character as descriptive of the intended purpose of those goods. However, contrary to what the applicant maintains, that fact does not mean that the prefix ‘fem’ cannot be taken into account when comparing the signs at issue.

36      It should also be borne in mind that the weak distinctive character of one element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the perception of the relevant public (see CLORALEX, paragraph 35 and the case-law cited). That is particularly so in the present case.

37      It follows that, for the purposes of comparing the signs, account must be taken of the signs at issue as a whole.

38      As regards the visual comparison of the signs at issue, the Board of Appeal considered, in paragraph 16 of the contested decision, that, on account of the secondary nature of the figurative elements of the earlier mark, they might be disregarded when visually comparing those signs. The Board of Appeal also stated that, given that the signs at issue consist of a similar number of letters, seven in the case of the mark applied for and eight in the case of the earlier sign, five of which were identical including the first four letters of each sign, those signs had an average degree of visual similarity.

39      That assessment by the Board of Appeal must be upheld. The first four letters and the sixth letter of the signs at issue are identical and the differences between the signs are not such as to offset the similarity derived from their identical letters. It follows that, when assessed globally, the signs must be considered as having an average degree of visual similarity.

40      As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 17 of the contested decision, that those signs had an identical number of syllables and that, according to the pronunciation rules of the Spanish language, the only difference lay in the last syllable of those signs, because in Spanish the letter ‘v’ is pronounced like a ‘b’. The Board of Appeal therefore considered that the signs at issue had a high degree of phonetic similarity.

41      That conclusion must be upheld. The phonetic similarity of the signs at issue is reinforced, in the present case, by the pronunciation of the letter ‘v’ in Spanish. It follows that those signs have a high degree of phonetic similarity.

42      As regards the conceptual comparison of the signs at issue, the Board of Appeal considered, in paragraph 18 of the contested decision, that, notwithstanding the fact that the first part of those signs ‘femi’ might suggest the Spanish word ‘femenino’, the signs had no meaning as such in Spanish. According to the Board of Appeal, the conceptual comparison was therefore neutral.

43      As has been found in paragraph 33 above, the element ‘fem’, constituting the beginning of the signs at issue, will, for the Spanish-speaking public of the European Union, evoke the Spanish word ‘femenino’, meaning ‘feminine’, which derives from the Latin word ‘femina’. The rest of the signs, ‘ivia’ and ‘ibion’, have no meaning for the Spanish-speaking public. It follows that there is a certain conceptual similarity between those signs.

 Likelihood of confusion

44      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and VENADO with frame and others, paragraph 74).

45      In the present case, the Board of Appeal found, in paragraph 24 of the contested decision, that, on account of the identity of the goods in question, the average degree of visual similarity, the high degree of phonetic similarity and the average degree of distinctiveness of the figurative mark registered under earlier international arrangements, there was a likelihood of confusion between the marks at issue on the part of the relevant Spanish-speaking public, even considering the high degree of attentiveness of that public.

46      As has been stated above, the goods covered by the marks at issue are identical. As for the signs at issue, they have, for the Spanish-speaking public, an average degree of visual similarity, a high degree of phonetic similarity and a certain degree of conceptual similarity.

47      So far as concerns the distinctive character of the figurative mark registered under earlier international arrangements, the Board of Appeal rightly found that its inherent distinctive character was normal with regard to the goods in Class 5 covered by the mark. Moreover, that conclusion has not been contested by the applicant.

48      In addition, it should be borne in mind that the fact that the relevant public will be more attentive to the identity of the producer or provider of the goods or service of which it wishes to avail itself does not mean, however, that it will examine the mark before it in the slightest detail or that it will compare it in great detail to another mark. Even for a public with a high level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26, and judgment of 31 January 2012 in Case T-378/09 Spar v OHIM - Spa Group Europe (SPA GROUP), not published in the ECR, paragraph 20).

49      The Board of Appeal was therefore right to find that there was a likelihood of confusion between the mark applied for and the figurative mark registered under earlier international arrangements.

50      In the light of all of the foregoing, the single plea in law and the entire action must be dismissed.

 Costs

51      Under Article 87(2) 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.

52      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Endoceutics, Inc. to pay the costs.

Delivered in open court in Luxembourg on 16 July 2014.

[Signatures]

* Language of the case: English.