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

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

24 September 2014 (*)

(Community trade mark - Opposition proceedings - International registration designating the European Community - Word mark GEPRAL - Earlier international word mark DELPRAL - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T-493/12,

Sanofi SA, established in Paris (France), represented by C. Hertz-Eichenrode, 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 being

GP Pharm SA, established in Sant Quinti de Mediona (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 September 2012 (Case R 201/2012-2), concerning opposition proceedings between Sanofi SA and GP Pharm SA,

THE GENERAL COURT (Fourth Chamber),

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

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 14 November 2012,

having regard to the response lodged at the Court Registry on 15 February 2013,

having regard to the change in the composition of the Chambers of the General Court,

further to the hearing on 10 June 2014,

gives the following

Judgment

 Background to the dispute

1        On 24 September 2009, GP Pharm SA filed an application for international registration designating the European Community with 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 mark in respect of which international registration was sought is the word sign GEPRAL.

3        The goods in respect of which international 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. Those goods corresponded, initially, to the description ‘pharmaceutical preparations for human purposes’ and, after GP Pharm made two successive restrictions to the scope of the application for registration, on 11 August 2011 and 10 April 2012, finally corresponded to the description ‘oncological preparations and preparations for cardiovascular treatments’.

4        The application for international registration was published in Community Trade Marks Bulletin No 38/2009 of 5 October 2009.

5        On 6 April 2010, the applicant, Sanofi SA, filed a notice of opposition, pursuant to Article 156, read in conjunction with Article 42(2) of Regulation No 207/2009, to international registration of the mark applied for in respect of the goods referred in paragraph 3 above.

6        The opposition was based on the earlier international registration No 418607, with effect in Austria, of 28 October 1975, of the word sign DELPRAL designating goods in Class 5 and corresponding to the description ‘pharmaceutical, veterinary and sanitary preparations, dietetic substances for medical purposes, plasters, materials for dressings, disinfectants’.

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

8        Following a request by GP Pharm pursuant to Article 42(2) of Regulation No 207/2009, the applicant filed several [items] as proof of use of the earlier mark.

9        On 9 December 2011, the Opposition Division upheld the opposition in its entirety. In support of its decision, the Opposition Division held that, first, the applicant had furnished proof of use only in respect of ‘pharmaceutical preparations for the treatment of the disorders of the central nervous system’, which are an objective sub-category of ‘pharmaceutical preparations’; secondly, those goods were in part similar and in part identical to the goods covered by the mark applied for; thirdly, the signs at issue were similar; and that, fourthly, and accordingly, there was a likelihood of confusion between the marks at issue.

10      On 25 January 2012, the applicant 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 5 September 2012 (‘the contested decision’), the Second Board of Appeal annulled the decision of the Opposition Division on the ground that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

12      In support of that decision, the Board of Appeal found, in essence, that, first, in the present case, the relevant public was composed of both professionals in the medical sector and patients in Austria (paragraph 23 of the contested decision); secondly, the goods respectively covered by the marks at issue had a low degree of similarity (paragraphs 24 to 29 of the contested decision); thirdly, the signs at issue had some similarities (paragraphs 30 to 33 of the contested decision); and that, fourthly and lastly, given the low degree of similarity between the goods in question and the relatively low degree of similarity between the signs at issue, as well as the relatively high degree of attentiveness of the relevant public, there was no likelihood of confusion between the marks at issue (paragraphs 34 to 38 of the contested decision).

 Forms of order sought

13      The applicant claims that the Court should:

-        annul the contested decision;

-        order OHIM to pay the costs.

14      OHIM contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

 Preliminary observations

15      The applicant relies on two pleas in law, namely, first, infringement of Article 8(1)(b) of Regulation No 207/2009 and, secondly, failure to state reasons for the purposes of Article 75 of the regulation as regards the assessment of the similarity of the signs at issue. The Court considers it appropriate to assess those two pleas in law together.

16      Under Article 8(1)(b) of Regulation No 207/2009, applicable in the present case pursuant to Article 156(1) of the regulation, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) (see judgment of 9 July 2003 in Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T-162/01, ECR, EU:T:2003:199, paragraph 30 and the case-law cited).

17      In support of its first plea in law, the applicant alleges infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal found that there was no likelihood of confusion between the marks at issue, inter alia, on the basis of, it is claimed, an erroneous assessment of the similarity of the goods respectively designated by the marks and of both their visual and phonetic similarities.

 The relevant public

18      The first point to be noted is that the applicant does not contest the Board of Appeal’s assessment as to the relevant public in Austria, namely, medical professionals, including doctors and pharmacists, on the one hand, and patients, as end consumers of the goods in question, on the other, all of whom have a high, and higher than the average, level of attentiveness (paragraph 23 of the contested decision). In the light of the consistent case-law to the same effect in the field of pharmaceutical products (judgments of 21 October 2008 in Aventis Pharma v OHIM - Nycomed (PRAZOL), T-95/07, EU:T:2008:455, paragraphs 27 to 30; 15 December 2010 in Novartis v OHIM - Sanochemia Pharmazeutika (TOLPOSAN), T-331/09, ECR, EU:T:2010:520, paragraphs 21 to 27; and 14 July 2011 in ratiopharm v OHIM - Nycomed (ZUFAL), T-222/10, EU:T:2011:383, paragraphs 19 and 20), that assessment is not vitiated by error, and, accordingly, must be confirmed.

 Comparison of the goods

19      As regards the comparison of the goods, the applicant submits, in essence, that the Board of Appeal overstated the difference in the therapeutic indications of the goods in question and gave too much weight to that factor, which led it to fail to take account of the degree of similarity between the goods. OHIM contends that the Board of Appeal found merely that those goods had a low degree of similarity in that they were aimed at treating very specific, different diseases. Since therapeutic indication is an important factor that has to be taken into consideration when assessing the degree of similarity of the goods in question, OHIM contends that the Board of Appeal was therefore fully entitled to conclude that, in the present case, the different therapeutic indications were an important factor that might diminish the degree of similarity of the goods.

20      According to settled case-law, all the relevant factors characterising the relationship between the goods in question should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T-443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited). Goods are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (see judgments in PiraÑAM diseño original Juan Bolaños, EU:T:2007:219, paragraph 50, and of 22 January 2009 in Commercy v OHIM - easyGroup IP Licensing (easyHotel), T-316/07, ECR, EU:T:2009:14, paragraph 57). As regards pharmaceutical products more specifically, the case-law has recognised that their purpose or intended use is of fundamental importance in the definition of a sub-category of those products. Given that the purpose and intended use of such products is expressed in their therapeutic indication, it necessarily follows that their therapeutic indication is the fundamental criterion for identifying the pharmaceutical products covered by the trade mark application and, as a consequence, the scope of the protection of the mark (see, to that effect, judgment in ZUFAL, cited in paragraph 18 above, EU:T:2011:383, paragraphs 25 and 26).

21      In the present case, the conflict is between the earlier mark covering goods corresponding to the description ‘pharmaceutical preparations for the treatment of the disorders of the central nervous system’, in respect of which the applicant had furnished proof of use before OHIM (see paragraph 9 above), and the mark applied for covering goods corresponding to the description ‘oncological preparations and preparations for cardiovascular treatments’ (see paragraph 3 above).

22      Clearly, those two sub-categories of goods are not only encompassed in the category ‘pharmaceutical products’ or ‘pharmaceutical preparations’, but are also, on account of being medicines subject to medical prescription, marketed through the same distribution channels, namely, pharmacies, which in itself indicates a certain degree of similarity between the goods. Indeed, in that regard, the case-law has already made it clear that medicines are goods of the same nature, that is, they are pharmaceutical products; they have the same purpose or intended use, that is, the treatment of human health problems; they are aimed at the same consumers, namely, medical professionals and patients; and they use the same distribution channels, typically pharmacies, which is a result of the goods in question belonging to the same general category of goods: medicines. However, since this is a very wide category comprising goods that are very diverse in nature and use, and given the high degree of attentiveness of the relevant public as to their purpose and intended use, as expressed in their therapeutic indication, as well as their potential side-effects on human health, the fact, on its own, that medicines belong to the same general category of goods supports the finding of only a low degree of similarity between the medicines in question (see, to that effect, judgment in TOLPOSAN, cited in paragraph 18 above, EU:T:2010:520, paragraphs 35 to 37).

23      In the present case, the goods respectively covered by the marks at issue (see paragraph 21 above) have a very different therapeutic indication, namely, the treatment of the disorders of the central nervous system, on the one hand, and the treatment of cancer and cardiovascular diseases, on the other. Consequently, as the Board of Appeal found in paragraphs 27 and 28 of the contested decision, the respective purposes of the goods in question, in so far as they are aimed at treating specific and different diseases, cannot be regarded as being in competition or interchangeable with each other. Furthermore, as regards their being at least complementary in nature within the meaning of the case-law cited in paragraph 22 above, the Board of Appeal’s finding, which is not in itself disputed by the applicant, in essence, that, in principle, the goods in question cannot be complementary, save in the exceptional case where several diseases are present at the same time, requiring several distinct treatments, such as, for example, the treatment of a brain tumour with cancer drugs which may be coupled with the treatment of central nervous system problems with anti-psychotic drugs, must be confirmed (paragraph 28 of the contested decision).

24      In this connection, the applicant cannot reasonably claim that the therapeutic indication is not of decisive importance for the relevant public on the ground that, inter alia, the packaging of the goods in question does not mention that indication, but only their active ingredient and the way in which they are to be administered. On the contrary, given the high degree of attentiveness of the relevant public, composed of medical personnel and patients suffering from diseases subject to treatment with the medicines in question, the therapeutic indication, which lies behind the required medical prescription, is of decisive importance (see, to that effect, judgment in TOLPOSAN, cited in paragraph 18 above, EU:T:2010:520, paragraph 36) and the relevant public is generally aware of it before purchasing or administering the medicine concerned, regardless of whether or not it is indicated on the packaging of the medicine.

25      It follows from the foregoing considerations that, having regard to the elements of similarity between the goods in question found in paragraphs 22 and 23 above and the difference in their respective therapeutic indications, the Board of Appeal did not err in concluding that the goods were similar only to a low degree.

 Comparison of the signs

26      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 (judgment of 13 September 2007 in Il Ponte Finanziaria v OHIM, C-234/06 P, ECR, EU:C:2007:514, paragraph 48, and judgment in easyHotel, cited in paragraph 20 above, EU:T:2009:14, paragraph 42).

27      The applicant contests, inter alia, the validity of the visual and phonetic comparisons of the signs at issue and, consequently, the global assessment of the likelihood of confusion, as made in the contested decision. OHIM contends, in essence, that the public normally pays more attention and attaches more importance to the first part of a word. Therefore, the fact that the respective first letters of the signs at issue are different would prevent recognition of a high degree of similarity between them. As regards phonetic similarity, OHIM states that even if, admittedly, the second syllable of the signs at issue, ‘pral’, is pronounced in an identical manner, the first syllable of the earlier sign, ‘del’, is very different from the first syllable, ‘ge’, of the sign applied for. Given that the common syllable, ‘pral’, is situated at the end of both signs and that their beginning is completely different, it is contended that the Board of Appeal did not err in holding that there was a low degree of phonetic similarity between the signs at issue.

28      In the present case, the Board of Appeal acknowledged that there was ‘a degree of similarity’ between the signs at issue (paragraphs 30 and 33 of the contested decision).

29      Visually, the signs at issue have five letters in common, namely, ‘e’, ‘p’, ‘r’, ‘a’ and ‘l’. Similarly, as the Board of Appeal stated in paragraph 30 of the contested decision, in both signs the letter ‘e’ appears in the second position and the four other letters appear in the same order giving rise to the identical ending, ‘pral’. In addition, the signs are almost the same in length, seven and six letters, respectively. It follows that the visual differences are limited to the letter ‘g’ of the mark applied for, on the one hand, and to the letters ‘d’ and ‘l’ of the earlier mark, on the other.

30      However, contrary to what is contended by OHIM, those visual differences are not such as to render the signs at issue only slightly similar as regards their overall visual impression. As the applicant submits, first, the difference between the respective upper case first letters, ‘D’ and ‘G’, the contour and shape of which are visually similar, is not significant. Secondly, the additional letter ‘l’ in the earlier mark, especially where it appears in lower case, tends to become indistinct alongside the similar overall visual impressions of the signs at issue, which is indirectly confirmed by the Board of Appeal, which itself referred incorrectly to the word ‘depral’ three times in paragraph 24 of the contested decision. Nor may OHIM contend that the relevant public pays particular attention to the beginning of the signs. In the present case, given the identity of the final sequence of letters, ‘pral’, the slight visual dissimilarity of the elements ‘Ge’ and ‘Del’ and the visual impression of similarity produced by the signs at issue as a whole, the relevant public is not likely to spot those differences in isolation and pay particular attention to them. Lastly, OHIM cannot find support in the judgment of 23 September 2009 in GlaxoSmithkline and Others v OHIM - Serono Genetics Institute (FAMOXIN) (T-493/07, T-26/08 and T-27/08, EU:T:2009:355, paragraph 68), raised at the hearing, since the ending ‘pral’ is less common in the pharmaceutical field than the ending ‘oxin’ of the signs Famoxin and Lanoxin, and the differences between the elements ‘fam’ and ‘lan’ are more significant and more perceptible than those between the elements ‘Ge’ and ‘Del’ of the signs at issue.

31      Therefore, the Board of Appeal was not entitled to conclude that, visually, there was only ‘a degree of similarity’ between the signs at issue, but ought to have found a high degree of visual similarity between them.

32      As regards the phonetic comparison, it should be recalled that, even in the context of the assessment of the phonetic aspects of a mark, the interdependence of its visual and phonetic aspects must be taken into account (see, to that effect, judgment of 12 July 2011 in Aldi Einkauf v OHIM - Illinois Tools Works (TOP CRAFT), T-374/08, EU:T:2011:346, paragraph 56). In the present case, each of the word signs at issue comprises two syllables containing the same vowels ‘e’ and ‘a’. The final syllables of the two signs, constituted by the ending ‘pral’, are, first, the most important because of their identical visual impressions; secondly, are recognised as such by Austrian consumers; and, thirdly, are pronounced identically by them. In those circumstances, contrary to what was stated by the Board of Appeal in paragraph 31 of the contested decision, because of the identical position of the letter ‘e’ in the two signs at issue, and notwithstanding the phonetic perception by the relevant public of the two consonants that surround it, the first syllables ‘del’ and ‘ge’ are not very different phonetically and are, in any event, pronounced by that public more rapidly than the second syllable ‘pral’. In those circumstances, contrary to what OHIM submits, the differences between the syllables ‘del’ and ‘ge’ are not such as to affect the phonetic comparison in a significant manner. Moreover, when those syllables are combined with the consonant ‘p’ in order to give the sequence of letters ‘delp’ and ‘gep’, they sound only slightly different, in the light of the fact that the letter ‘l’ tends to become indistinct phonetically also (see paragraph 29 above). Consequently, as regards the overall phonetic impression, the similarity of the word elements ‘delpral’ and ‘gepral’ is based above all on the pronunciation of those sequences of letters in conjunction with the ending ‘pral’, which leads to a similar rhythm of pronunciation and similar intonation in both cases.

33      It follows that the pronunciations of the signs at issue by the Austrian consumer are similar, in particular, because of the identity of their last syllable. Accordingly, the Board of Appeal was not entitled to conclude, in paragraph 31 of the contested decision, that the syllables ‘del’ and ‘gep’ had perceptible differences. The phonetic comparison ought to have been made between the syllables ‘del’ and ‘ge’, on the one hand, and the syllables ‘pral’, on the other, which would have required the conclusion that there was a phonetic similarity at least to an average degree between the word elements at issue.

34      It is common ground that, conceptually, the signs at issue do not have any meaning in German, so that, as the Board of Appeal stated in paragraph 32 of the contested decision, a conceptual comparison cannot be made.

35      Having regard to the foregoing considerations, which demonstrate a high degree of visual similarity and an at least average degree of phonetic similarity between the signs at issue, it must be held that the Board of Appeal erred in finding that the signs had only ‘a degree of similarity’ (paragraphs 30 and 33 of the contested decision).

36      In those circumstances, as regards the second plea in law, alleging infringement of the obligation to state reasons pursuant to Article 75 of Regulation No 207/2009, suffice it to point out that the applicant has been able to contest the validity of the Board of Appeal’s assessment and that the Court has been able to carry out its review in that regard. Therefore, that plea in law cannot succeed and must be rejected.

 Global assessment of the likelihood of confusion

37      The assessment of the likelihood of confusion on the part of the relevant public depends on various factors and must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global assessment must, in relation to the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see judgments of 12 June 2007 in OHIM v Shaker, C-334/05 P, ECR, EU:C:2007:333, paragraphs 34 and 35 and the case-law cited, and of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C-498/07 P, ECR, EU:C:2009:503, paragraphs 59 and 60 and the case-law cited).

38      According to OHIM, the final conclusion of the Board of Appeal is not based only on the low degree of similarity of the goods and signs at issue, but also on the fact that the degree of attentiveness of the relevant public, including, professionals such as doctors and pharmacists, and end consumers, namely, patients, is relatively high. That higher degree of attentiveness when purchasing the goods in question, which is not in itself contested by the applicant, was, it is contended, a decisive factor in the assessment of the likelihood of confusion between the marks at issue.

39      In this connection, the Board of Appeal stated, inter alia, that the degree of similarity between the goods at issue was not high, so that, in accordance with the ‘interdependence principle’, in order to find a likelihood of confusion, the degree of similarity of the signs at issue would have to be significant ‘to act as a counterweight’, which was not the case (paragraph 36 of the contested decision). Furthermore, the Board of Appeal found, in essence, that, given the high degree of attentiveness of the relevant public, that public would not fail to notice the different beginnings of the marks at issue or the differences as regards the therapeutic indications of the goods in question (paragraph 37 of the contested decision). It therefore concluded, having regard to the relatively low degree of similarity between the signs at issue and the low similarity of the goods in question, and to the relatively high degree of attentiveness of the relevant public, that there was no likelihood of confusion between the marks at issue (paragraph 38 of the contested decision).

40      Contrary to OHIM’s contentions, having regard to the considerations set out in paragraphs 26 to 35 above and to the fact that the marks at issue have a high degree of visual similarity as well as an, at least, average degree of phonetic similarity, that global assessment of the likelihood of confusion is clearly vitiated by error. The overall high degree of similarity between the marks, which is significant from the point of view of the relevant public who have a high degree of attentiveness, is coupled with a low degree of similarity between the goods in question, which belong to the same category, namely, ‘pharmaceutical products’ (see paragraphs 22 to 25 above). The low degree of similarity between the goods in question, that is, generally medicines subject to medical prescription, constitutes a relevant and not insignificant factor in the context of the global assessment of the likelihood of confusion, in that it could, in conjunction with the high degree of similarity of the marks at issue, especially where they are placed on the packaging of the medicines, lead that public, even if it has a higher than average degree of attentiveness, to believe that those medicines come from the same undertaking or from economically-linked undertakings marketing a ‘family of products’, all designated by the common ending ‘pral’. Consequently, having regard to the products in question, the overall impression produced by the marks at issue ought to have led the Board of Appeal to conclude that there was a likelihood of confusion between the marks on the part of the relevant public.

41      Consequently, the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be upheld and the contested decision annulled.

 Costs

42      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.

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

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the Decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 September 2012 (Case R 201/2012-2), concerning opposition proceedings between Sanofi SA and GP Pharm SA;

2.      Orders OHIM to pay the costs.

Delivered in open court in Luxembourg on 24 September 2014.

[Signatures]

* Language of the case: English.