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

JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

21 January 2016 (*)

(Community trade mark — Opposition proceedings — Application for Community word mark Lenah.C — Earlier national word mark LEMA — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑802/14,

Laboratorios Ern, S A, established in Barcelona (Spain), represented by S. Correa Rodriguez, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

michelle menard GmbH — Berlin cosmetics, established in Berlin (Germany),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 24 September 2014 (Case R 2260/2013-4) concerning opposition proceedings between Laboratorios Ern, S A and michelle menard GmbH — Berlin cosmetics,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Wiszniewska-Białecka and I. Ulloa Rubio (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 4 December 2014,

having regard to the response lodged at the Court Registry on 8 April 2015,

having regard to the decision of 1 June 2015 not to allow the lodging of a reply,

having regard to the fact that no application for a hearing was made by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

gives the following

Judgment

1        On 18 November 2011, michelle menard GmbH — Berlin cosmetics filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 for which registration is sought is the word sign Lenah.C. 

3        The goods in respect of which registration was applied for are in Class 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 to the following description:

–        Class 3: ‘Paintstripper; Preparations for cleaning waste pipes; Make-up removing preparations; Astringent for cosmetic purposes; Alum stones (antiseptic); Aloe-vera preparations for cosmetic purposes; Amber (perfume); Antistatic preparations for household purposes; Antiperspirants (toiletries); Aromatics (essential oils); Breath-freshening sprays; Ethereal essences; Essential oils; Cedarwood (essential oils of-); Eyebrow cosmetics; Eyebrow pencils; Soaps for brightening textiles; Cake flavourings [essential oils]; Bath salts, not for medical purposes; Cosmetic preparations for baths; Balms, Not for medical purposes; Beard dyes; Moustache wax; Bergamot oil; Pumice stone; Cream for whitening the skin; Bleaching preparations for cosmetic purposes; Laundry bleach; Bleaching salts; Bleaching soda; Extracts of flowers (perfumes); Polish for furniture and flooring; Floor wax; Deodorants; Deodorants for personal use; Disinfectant soaps; Deodorant soap; Detergents except for use in manufacturing processes and for medical purposes; Diamantine (abrasive); Compressed air in cans for cleaning and dust removal; Scented wood; Preparations for perfuming linen; Scented water; Javelle water; Paint-stripping preparations; Depilatory preparations; Depilatory wax; Scale removing preparations for household purposes; Colour brightening chemicals for household purposes [laundry]; Laundry blueing; Colorants for toilet purposes; Paint removing preparations; Cosmetic dyes; Greases for cosmetic purposes; Scouring preparations; Degreasers (other than for use in manufacturing processes); Varnish-removing preparations; Stain removers; Gaultheria oil; Geraniol; Shining preparations (polish); Laundry glaze; Starch glaze for laundry purposes; Glass cloths; Glass cloth; Smoothing preparations [starching]; Smoothing stones; Bases for flower perfumes; Hair dyes; Hair spray; Hair wash; Hair lotions; Cosmetic creams; Cosmetic preparations for skincare; Heliotropin; Ionone (perfumery); Ionone (perfumery); Adhesives for affixing false hair; Adhesives for cosmetic use; Adhesives for affixing false eyelashes; Eau-de-Cologne; Corundum (abrasive); Cosmetics; Cosmetic kits; Cosmetic pencils; Cosmetic massage oils; Cleaning chalk; Artificial nails; False eyelashes; Lacquer-removing preparations; Lavender oil; Lavender water; Leather bleaching preparations; Waxes for leather; Preservatives for leather (polishes); Lipsticks; Lip gloss; Solvents for floor wax (cleansers); Lotions for cosmetic purposes; Make-up; Almond milk for cosmetic purposes; Almond milk for cosmetic purposes; Almond soap; Massage gels, other than for medical purposes; Medicated soaps; Carbides of metal (abrasives); Cloths impregnated with a detergent for cleaning; Leaf shine compositions for plants; Cosmetics; Musk (perfumery); Mouth washes (not for medical purposes); Mouthwash, not for medical use; Nail polish; Nail care products; Washing soda, for cleaning; Soda lye; Neutralizers for permanent waving; Oils for toilet purposes; Oils for cosmetic purposes; Oils for cleaning purposes; Hair-waving preparations; Oils for perfumes and scents; Perfumery goods; Perfumes; Pastes for razor strops; Mint for perfumery; Mint essence; Flavourings for beverages (essential oils); Polishing creams; Polishing preparations; Denture polishes; Polishing paper; Jewellers’ rouge; Polishing stones; Waxes (polishing); Pomades for cosmetic use; Cleansing milk for toilet purposes; Cleaning preparations; Preparations for cleaning dentures; Shaving soap; Rust removing preparations; Anti-skid liquids for floors; Anti-skid wax for floors; Safrol; Volatile alkali (ammonia) (detergent); Sandpaper; Whiting; Cleansing milk for toilet purposes; Grinding preparations; Grinding preparations; Abrasive paper; Make-up; Make-up preparations; Make-up powder; Emery; Emery cloth; Emery paper; Sandcloth; Whitening; Beauty masks; Shoe polish and creams; Shoe wax; Shoe wax and cobblers' wax; Anti-perspirant soap; Soaps; Soap for foot perspiration; Shampoos; Silicon carbide (abrasive); Sun-tanning preparations (cosmetics); Starch for laundry purposes; Badian essence; Talcum powder for toilet use; Wallpaper cleaning preparations; Terpenes (essential oils); Turpentine, for degreasing; Oil of turpentine for degreasing; Cosmetic preparations for animals; Shampoos for pets; Toiletries; Toilet soaps; Toilet water; Tripoli stone for polishing; Tissues impregnated with cosmetic lotions; Petroleum jelly for cosmetic purposes; Volcanic ash for cleaning; Laundry wax; Bluing for laundry; Soaking preparations for laundry use; Washing preparations; Hydrogen peroxide for cosmetic purposes; Cotton wool for cosmetic purposes; Cotton sticks for cosmetic purposes; Fabric softeners; Incense; Cosmetic preparations for eyelashes; Mascara; Tooth bleaching gel; Dentifrices; Decorative transfers for cosmetic purposes; Essential oils of citron; Potpourris (fragrances); Dry cleaning preparations; Furbishing preparations; Quillaia bark for washing; Preparations for shaving; Shaving soaps; Shaving stones (antiseptic); After-shave; Fumigation preparations (perfumes); Perfumed burning sticks; Windshield cleaning liquids;’

–        Class 5: ‘Dental wax; Purgatives; Medical preparations for slimming purposes; Adjuvants for medical purposes; Miticides; Aconitine; Albuminous milk; Aldehydes for pharmaceutical purposes; Algicides; Alkaline iodides for pharmaceutical purposes; Alkaloids for medical purposes; Alcohol for medical purposes; Alcohol for pharmaceutical purposes; Aloe vera preparations for pharmaceutical purposes; Dental amalgams; Amino acids for medical purposes; Amino acids for veterinary purposes; Analgesics; Anaesthetics; Angostura bark for medical purposes; Antibiotics; Antiparasitic preparations; Anti-rheumatism bracelets; Anti-rheumatism rings; Antiseptics; Antiseptic cotton; Appetite suppressants for medical use; Bracelets for medical purposes; Medicines for human purposes; Medicines for veterinary purposes; Medicines for dental purposes; Medicines for alleviating constipation; Aseptic cotton; Asthmatic tea; Ethers for pharmaceutical purposes; Caustics for pharmaceutical purposes; Caustic pencils; For medical purposes; Eye-wash; Acetates for pharmaceutical purposes; Food for babies; Bath salts for medical purposes; Bath preparations, medicated; Therapeutic preparations for the bath; Bacterial poisons; Bacterial preparations for medical and veterinary use; Bacteriological preparations for medical and veterinary use; Balms for medical purposes; Balsamic preparations for medical purposes; Hygienic bandages; Bandages for dressings; Barks for pharmaceutical purposes; Cotton for medical purposes; Tranquillizers; Biological preparations for medical purposes; Biological preparations for veterinary purposes; Biocides; Lead water; Blood for medical purposes; Haematogen; Leeches for medical purposes; Blood plasma; Depuratives; Haemostatic pencils; Confectionery for pharmaceutical purposes; Bromine for pharmaceutical purposes; Powder of cantharides; Chemical preparations to treat wheat blight (smut); Chemical preparations for treating phylloxera; Vine disease treating chemicals; Chemicopharmaceutical preparations; Chemical contraceptives; Chemical conductors for electrocardiograph electrodes; Chemical preparations to treat mildew; Chemical preparations for the diagnosis of pregnancy; Chemical preparations for medical purposes; Chemical preparations for pharmaceutical purposes; Chemical preparations for veterinary purposes; Chemical reagents for medical or veterinary purposes; Quinquina for medical purposes; Quinine for medical purposes; Chinoline for medical purposes; Surgical tissues; Surgical implants (living tissue); Hydrated chloral for pharmaceutical purposes; Chloroform; Condurango bark for medical purposes; Curare; Sanitary towels; Decoctions for pharmaceutical purposes; Dental cement; Deodorants for clothing and textiles; Deodorants other than for personal use; Disinfectants for chemical toilets; Germicides for hygiene purposes; Disinfectants; Detergents for medical purposes; Diabetic bread; Diagnostic preparations for medical purposes; Diastase for medical purposes; Dietetic substances (for medical purposes); Dietetic beverages adapted for medical purposes; Dietetic food for medical purposes; Digitalin; Dill oil for medical purposes; Drugs for medical purposes; Alloys of precious metals for dental purposes; Albuminous preparations for medical purposes; Elixirs (pharmaceutical preparations); Gentian for pharmaceutical purposes; Enzymes for medical applications; Enzymes for veterinary purposes; Enzyme preparations for medical purposes; Enzyme preparations for veterinary purposes; Edible plant fibres (non-nutritive); Aluminium acetate for pharmaceutical purposes; Esters for pharmaceutical purposes; Eucalyptol for pharmaceutical purposes; Eucalyptus for pharmaceutical purposes; Fennel for medical purposes; Ferments for pharmaceutical purposes; Greases for medical purposes; Greases for veterinary purposes; Febrifuges; Fishmeal for pharmaceutical purposes; Fly catching paper; Fly catching adhesives; Fly destroying preparations; Formic aldehyde for pharmaceutical purposes; Chilblain preparations; Frostbite salve for pharmaceutical purposes; Fungicides; Additives to fodder for medical purposes; Gallic acid for pharmaceutical purposes; Gases for medical purposes; Gelatine for medical purposes; Royal jelly (for medical purposes); Poisons; Glucose for medical purposes; Glycerine for medical purposes; Glycerophosphates; Dental amalgams of gold; Guaiacol for pharmaceutical purposes; Gum for medical purposes; Gamboge for medical purposes; Gurjun (gurjon, gurjan) balsam for medical purposes; Belts for sanitary napkins [towels]; Haemostatic pencils; Denture adhesives; Haemoglobin; Haemorrhoid preparations; Preparations for destroying dry rot fungus; Yeast for pharmaceutical purposes; Sticking plasters; Herb teas; Remedies for foot perspiration; Remedies for perspiration; Herbicides; Charcoal for pharmaceutical purposes; Extracts of hops for pharmaceutical purposes; Hormones for medical purposes; Cement for animal hooves; Corn remedies; Corn rings for the feet; Repellents for dogs; Dog lotions; Dog washes; Hydrastine; Hydrastinine; Sanitary preparations for medical purposes; Vaccines; In vitro diagnostic agents for medical use; Pants, absorbent, for incontinents; Preparations for destroying insects; Insect repellent preparations; Insecticides; Irish moss for medical purposes; Isotopes for medical purposes; Jalap; Iodine for pharmaceutical purposes; Iodides for pharmaceutical purposes; Iodoform; Tinctures of iodine; Jujube (medicated); Potassium salts for medical purposes; Preparations of lime for pharmaceutical purposes; Calomel; Camphor for medical purposes; Camphor oil for medical purposes; Candy for medical purposes; Capsules for medicines; Carbolineum (parasiticide); Poultices; Cachou for pharmaceutical purposes; Chewing gum for medical purposes; Rubber for dental purposes; Germicides; Medical adhesive tapes; Adhesive tapes for medical purposes; Bone cement for surgical and orthopaedic purposes; Cocaine; Collodion for pharmaceutical purposes; Compresses; Headache pencils; Smoking herbs for medical purposes; Creosote for pharmaceutical purposes; Croton bark; Preparations of microorganisms for medical and veterinary use; Liquorice for pharmaceutical purposes; Stick liquorice for pharmaceutical purposes; Lactose; Larvae exterminating preparations; Laxatives; Cod liver oil; Linseed for pharmaceutical purposes; Linseed meal for pharmaceutical purposes; Lecithin for medical purposes; Liniments; Solutions for use with contact lenses; Solvents for removing adhesive plasters; Lotions for pharmaceutical purposes; Lotions for veterinary purposes; Preparations for air fresheners; Air purifying preparations; Lupulin for pharmaceutical purposes; Magnesia for pharmaceutical purposes; Malt for pharmaceutical purposes; Malted milk beverages for medical purposes; Almond milk for pharmaceutical purposes; Mangrove bark for pharmaceutical purposes; Preparations for destroying mice; Medicinal drinks; Medicinal infusions; Medicated preparations for hair growth; Medicinal infusions; Medicinal herbs; Sea water for medicinal baths; Flour for pharmaceutical purposes; Melissa water for pharmaceutical use; Milking grease; menstruation briefs; Menstruation tampons; Menthol; Anti-migraine articles; Milk ferments for pharmaceutical purposes; Milk sugar (lactose); Mineral food supplements; Mineral waters for medicinal purposes; Mineral water salts; Preparations for the treatment of burns; Soil-sterilising preparations; Antiuric preparations; Preparations for callouses; Preparations to facilitate teething; Moulding wax for dental use; Moleskin for medical purposes; Menstruation bandages; Sanitary pants; Mud for baths; Medicinal mud; Mothproofing preparations; Mothproofing paper; Mouthwashes for medical purposes; Mouthwash, for medical use; Ergot for pharmaceutical purposes; Myrobalan bark for pharmaceutical purposes; Media for bacteriological cultures; Lacteal flour (for babies); Albuminous foodstuffs for medical purposes; Nutritive substances for microorganisms; Food supplements for medical purposes; Narcotics; Bicarbonate of soda for pharmaceutical purposes; Sodium salts for medical purposes; By-products of the processing of cereals (for medical purposes); Nervines; Capsules for pharmaceutical purposes; Medicinal oils; Opiates; Opium; Opodeldoc; Opotherapy preparations; Paper for mustard plasters; Anti-parasitic collars for animals; Antiparasitic preparations; Parasiticides; Lozenges for pharmaceutical use; Pectin for pharmaceutical purposes; Pepsins for pharmaceutical purposes; Peptones for pharmaceutical purposes; Pearl powder; Pesticides; Mint for pharmaceutical purposes; Plasters for inflamed football injuries; Patches for medical purposes; Plasters; Pharmaceutical preparations; Pharmaceutical preparations for treating dandruff; Pharmaceutical preparations for skin care; Pharmaceutical and veterinary preparations; Phenol for pharmaceutical purposes; Phosphates for pharmaceutical purposes; Pills for pharmaceutical purposes; Plant-protection preparations; Pomades for medical purposes; Porcelain for dental prostheses; Preparations for bronchial dilation; Preparations of trace elements for human and animal use; Sterilising preparations; Pyrethrum powder; Quassia for medical purposes; Quebracho for medical purposes; Mercurial ointments; Radioactive substances for medical purposes; Radium for medical purposes; Rat poison; Fumigating pastilles; Fumigation preparations for medical purposes; Cleaning preparations for contact lenses; Medicine cases (portable) (filled); Rhubarb roots for pharmaceutical purposes; Smelling salts; Castor oil for medical purposes; Radiological contrast substances for medical purposes; Ointments for pharmaceutical purposes; Sal ammoniac lozenges; Salts for medical purposes; Salts for mineral water baths; Sarsaparilla (for medical purposes); Oxygen for medical use; Oxygen baths; Acids for pharmaceutical purposes; Preparations for destroying noxious animals; Lint for medical purposes; Soporifics; Reducing tea for medical purposes; Dental abrasives; Slug exterminating preparations; Anti-horse-fly oils; Flowers of sulphur for pharmaceutical purposes; Sulphur sticks (disinfectants); Mustard for pharmaceutical purposes; Mustard oil for medical purposes; Mustard poultices; Serums; Serotherapeutic medicines; Siccatives (drying agents) for medical purposes; Syrups for pharmaceutical purposes; Scapulars for surgical purposes; Panty liners (sanitary); Sunburn ointments; Sunburn preparations for pharmaceutical purposes; Semen for artificial insemination; Starch for dietetic or pharmaceutical purposes; Steroids; Breast-nursing pads; Strychnine; Styptic preparations; Sulphonamides (medicines); Suppositories; Tobacco extracts (insecticides); Tobacco-free cigarettes for medical purposes; Turpentine for pharmaceutical purposes; Oil of turpentine for pharmaceutical purposes; Test strips for medical purposes; Thermal water; Thymol for pharmaceutical purposes; Animal washes; Tinctures for medical purposes; Tonics (medicines); Glucose for medical purposes; Tissues impregnated with pharmaceutical lotions; Vermin destroying preparations; Preparations for killing weeds; Vaginal douches; Petroleum jelly for medical purposes; Gauze for dressings; First-aid boxes (filled); Materials for dressings; Materials for dressings; Absorbent cotton; Digestives for pharmaceutical purposes; Vesicants; Veterinary preparations; Cattle washes; Vitamin preparations; Wart pencils; Hydrogen peroxide for medical purposes; Wadding for medical purposes; Incense being insect repellent; Tartar for pharmaceutical purposes; Cream of tartar for pharmaceutical purposes; Incontinence diapers; Bismuth preparations for pharmaceutical purposes; Bismuth subnitrate for pharmaceutical purposes; Vulnerary sponges; Vermifuges; Medicinal roots; Material for stopping teeth; Dental mastics; Dental lacquers; Cedar wood for use as an insect repellent; Cellulose (materials for dressings); Cellulose ethers for pharmaceutical purposes; Cellulose esters for pharmaceutical purposes; Sugar for medical purposes.’

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2012/015 of 23 January 2012.

5        On 23 April 2012, the applicant, Laboratorios Ern, S A, filed a notice of opposition under Article 41 of Regulation No 207/2009 against registration of the mark sought in respect of the goods referred to in paragraph 3 above.

6        The opposition is based on the earlier Spanish mark LEMA lodged on 28 January 2000 and registered on 5 January 2001 under No 2 286 47 covering goods in Class 5 and corresponding to the following description: ‘Pharmaceutical and veterinary products; plasters, material for dressings, oral care products for medical use such as dentifrices and mouthwashes (except for hygienic products); disinfectants for medical use; preparations for destroying vermin; fungicides and herbicides, with the express exclusion of dietetic substances, food and beverages adapted for medical use and food for babies’.

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        At the request of michelle menard — Berlin cosmetics, the applicant adduced evidence in order to prove the genuine use of the earlier mark for the purposes of Article 42(2) and(3) of Regulation No 207/2009.

9        On 19 March 2013, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion.

10      On 18 November 2013 the applicant filed an 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 24 September 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found, first, that the applicant had proven genuine use of the earlier mark only in respect of ‘pharmaceutical products; oral care products for medical use’ and that at least some of the goods at issue were identical to those goods covered the earlier mark. It found, second, that there was a low degree of visual similarity between the signs at issue, that the phonetic similarity between the signs at issue was average and that the signs at issue were not conceptually similar. It concluded that, given the at best low visual similarity, the at best average phonetic similarity, the clear conceptual meaning of the earlier mark for Spanish consumers and the no more than normal distinctiveness of the earlier mark, there is no likelihood of confusion on the part of the relevant public, even for identical goods and even taking into account a normal level of attentiveness of the relevant consumer.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and, if applicable, michelle menard — Berlin cosmetics, to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of the evidence adduced for the first time before the General Court

14      As observed by OHIM and as stated in the annex to the application, the applicant produced a number of documents before the Court which had not been submitted in the proceedings before the Board of Appeal. They have been submitted by the applicant in Annex 8 to the application in order to demonstrate that the sign is used frequently in the pharmaceuticals industry to refer to Vitamin C.

15      In that regard, it should be noted that it is settled case-law that the purpose of bringing an action before the General Court is to secure review of the legality of the decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. Indeed, to admit such documents would be contrary to Article 135(4) of the Rules of Procedure, under which the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see judgment of 22 January 2015 in MIP Metro v OHIM — Holsten-Brauerei (H), T‑193/12, EU:T:2015:44, paragraph 16 and case-law cited).

16      Given that the documents were produced for the first time before the General Court, they are inadmissible and cannot be taken into account, without its being necessary to examine their probative value.

 Substance

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

18      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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.

19      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between similarity of the signs and similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20      Since the mark on which the opposition is based is a Spanish mark, the territory for the purposes of assessing the likelihood of confusion is Spain, as the Board of Appeal essentially found. The applicant has not disputed that finding.

21      The Board of Appeal found, correctly, that the relevant public was made up of professionals and average consumers with a relatively high level of attentiveness towards pharmaceutical products, as well as average consumers with a normal level of attentiveness in respect of cleaning and beauty products.

22      The applicant argues, incorrectly, that the Board of Appeal considered only a higher than average level of attentiveness. In fact, it is explicitly stated in paragraph 30 of the contested decision that there is no likelihood of confusion on the part of the public, even taking into account a normal level of attentiveness on the part of the relevant consumer.

 Comparison of the goods

23      As found, correctly, by the Board of Appeal, it is common ground that at least some of the goods covered by the sign sought are identical to the goods covered by the earlier mark.

 Comparison of the signs

24      According to case-law, the global 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, inter alia, 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. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and case-law cited).

25      In the present case, the signs to be compared are the word mark sought Lenah.C and the earlier word mark LEMA. 

–       The distinctive elements of the sign sought

26      The applicant takes the view that the sign sought is made up of two word elements, since the term ‘lenah’ and the letter ‘c’ are separated by the punctuation mark ‘.’, and that the word element ‘lenah.c’ forms a logical unit. The applicant argues that the element ‘lenah’ is dominant, given that the element ‘c’ of the sign sought refers to Vitamin C, which is commonly used in the pharmaceuticals and cosmetics industry and therefore is of secondary importance.

27      It should be observed, first of all, that given the size and simplicity of the structure of the sign sought, it is not very likely that the average consumer will be inclined to split the sign Lenah.C into two parts, ‘lenah’ and ‘c’. The relevant public will accordingly tend to perceive the sign Lenah.C as a whole.

28      Secondly, regarding the applicant’s argument that the element ‘c’ has a low level of distinctiveness, it should be noted that it has not been demonstrated that the relevant public perceives the letter ‘c’ in a mark as a reference to Vitamin C. Moreover, the documents the applicant attached to the application to prove that the sign c is commonly used in the pharmaceuticals industry to refer to Vitamin C must be disregarded, without its being necessary to examine them, as stated in paragraphs 14 to 16 above.

29      Although, as the applicant argues, the element ‘lenah’ is dominant because, according to the case-law, the consumer normally attaches more importance to the first parts of the mark than the subsequent parts (see, to that effect, judgments of 17 March 2004 in El Corte Inglés v OHIM — González Cabello et Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65), it should be remembered that that consideration does not hold true in all cases (see judgment of 16 May 2007 in Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, EU:T:2007:143, paragraph 70 and case-law cited) and does not, in any event, cast doubt on the principle that the assessment of the similarity of signs must take account of the overall impression created by them (judgment of 8 September 2010 in Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, EU:T:2010:362, paragraph 29). Accordingly, the suitable approach is to make a comparison of the signs taking into account the mark sought as a whole.

30      Consequently, the applicant’s argument that the comparison should be restricted to the words ‘lenah’ and ‘lema’ cannot be upheld and the conclusion is that the Board of Appeal was correct to compare the contested sign Lenah.C, as a whole with the earlier sign LEMA. 

–       Visual comparison

31      The Board of Appeal held that the signs at issue had a low degree of visual similarity.

32      The applicant considers that there is a strong visual similarity between the signs at issue. It argues that the Board of Appeal did not take sufficient account of the fact that the dominant element of the contested sign is the element ‘lenah’ and that, accordingly, the signs at issue have three letters in common. In the applicant’s submission, the only differences are the letter ‘n’ in the sign sought instead of the ‘m’ in the earlier sign, as those two letters are very similar, as well as the additional letter ‘h’ in the sign sought.

33      In the present case, the sign sought is made up of a five-letter word followed by the punctuation mark ‘.’ and the letter ‘c’, whilst the earlier sign is made up of a single four-letter word.

34      Although the signs at issue have in common the first, second and fourth letters, being the letters ‘l’, ‘e’ and ‘a’, there are also significant visual differences. The third letter is different, being the letter ‘m’ in the earlier sign and the letter ‘n’ in the sign sought. Although the letters ‘m’ and ‘n’ are visually quite similar, the sign sought differs from the earlier sign by reason of three additional elements: it comprises two additional letters, the letter ‘h’ and the letter ‘c’, and a punctuation mark. The sign sought, which comprises six letters and the punctuation mark ‘.’ is thus longer than the earlier sign, which comprises four letters.

35      It should also be observed that it is unlikely that the structure of the mark sought, which is unusual due to the presence of the punctuation mark ‘.’ placed before the letter ‘c’, will escape the consumer’s attention. In fact the punctuation mark ‘.’, which separates the word ‘lenah’ from the letter ‘c’ in the mark sought, is a significant element.

36      In the light of the foregoing considerations, the Board of Appeal was correct in finding that the signs at issue had a low degree of visual similarity.

–       Phonetic similarity

37      The Board of Appeal found that the signs at issue had an average level of phonetic similarity.

38      In the applicant’s submission, there is a strong phonetic similarity between the signs at issue. It argues that the words ‘lenah’ and ‘lema’ have three letters in common and that the overall sound of those words is quite similar because they have the same number of syllables and the same vowel and consonant structure, apart from the letters ‘m’ and ‘n’, which are pronounced almost identically, and the letter ‘h’, which is silent in Spanish.

39      In that regard it is important to stress the importance of the letter ‘c’ and the punctuation mark ‘.’ in the sign sought. The sign sought comprises at least three syllables, five if the punctuation mark ‘.’ (which is pronounced as ‘punto’ in Spanish) is pronounced, whereas the earlier sign has only two. The possibility cannot be ruled out that the punctuation mark ‘.’ will be pronounced separately.

40      Accordingly, the Board of Appeal was right in finding that there was an average level of phonetic similarity.

–       Conceptual similarity

41      The Board of Appeal found that the signs at issue were not conceptually similar, given that the sign sought has no meaning and the earlier sign means ‘motto’ or ‘slogan’ in Spanish.

42      The applicant disagrees with the Board of Appeal’s finding that the relevant public associates the word ‘lema’ with ‘motto’ or ‘slogan’. And considers that the word ‘lema’ is not a common or well-known word in Spanish but rather a learned term. It adds that since the word ‘lema’ has no connection with the goods in question, its conceptual meaning is not that clear for the average consumer, who is not able to understand it easily and make an immediate association and, on the contrary, will rather tend to understand it as being a made-up word.

43      First of all, the applicant’s assertion that the word ‘lema’ is not a commonly-used word but rather a learned term cannot be upheld because it is not substantiated by any evidence. It is, moreover and contrary to the applicant’s contentions, a commonly-used word. It is found in various Spanish-language dictionaries, such as the Diccionario de la lengua española de la Real Academia Española, and has a clear meaning and synonyms reflecting a more sustained level of language.

44      Secondly, the fact that an element of a word mark does not refer to any characteristic of the goods in respect of which the registration of that mark has been made does not prevent the relevant public from grasping immediately the meaning of that element (see, to that effect, judgment of 3 March 2004, Mülhens v OHIM — Zirh International (ZIRH), T‑355/02, ECR, EU:T:2004:62, paragraph 50).

45      According to the case-law, there can be no conceptual similarity between a mark which conveys no clear meaning in any of the official languages of the European Union and another mark of which the verbal element generally carries actual meaning for the relevant public (see, to that effect, judgment of 16 January 2008, Inter-Ikea v OHIM — Waibel (idea), T‑112/06, ECR, EU:T:2008:10, paragraph 70 and case-law cited).

46      Consequently, the Board of Appeal was right to find that the signs at issue were not conceptually similar.

 Likelihood of confusion

47      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular a similarity between the trade marks and between the goods or services concerned. Accordingly, a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

48      Case-law shows that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgments of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 98, and 14 October 2003 in Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, ECR, EU:T:2003:264, paragraph 54).

49      The element ‘lema’ has a clear and definite meaning for the relevant public, who will likely grasp it immediately (see paragraph 43 above).

50      Accordingly, the conclusion is that the Board of Appeal did not err in finding that there was no likelihood of confusion. Given the low level of visual similarity, the average phonetic similarity, conceptual differences due to the clear meaning of the earlier mark and the average distinctiveness of the earlier mark, there is no likelihood of confusion on the part of the relevant public, even for identical goods.

51      Accordingly, the applicant’s single plea in law must be rejected and the action as a whole must be dismissed.

 Costs

52      Under Article 134(1) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM. 

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Laboratorios Ern, S A to pay the costs.

Delivered in open court in Luxembourg on 21 January 2016.

[Signatures]

* Language of the case: English.

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