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

JUDGMENT OF THE GENERAL COURT (First Chamber)

20 November 2017 (*)

(EU trade mark — Invalidity proceedings — Application for the EU word mark Immunostad — Earlier national word mark ImmunoStim — Relative ground for refusal — Similarity of the trade marks — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) — Non-negligible part of the relevant public — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001))

In Case T‑403/16,

Stada Arzneimittel AG, established in Bad Vilbel (Germany), represented by R. Kaase and J.-C. Plate, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by D. Botis, and subsequently by D. Walicka, acting as Agents,

defendant,

the intervener before the General Court, formerly Société de développement et de recherche industrielle, then Vivatech, the other party to the proceedings before the Board of Appeal of EUIPO, being

Urgo recherche innovation et développement, established in Chenôve (France), represented by A. Sion and A. Delafond-Nielsen, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 April 2016 (Case R 863/2015-5), relating to invalidity proceedings between Vivatech and Stada Arzneimittel,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 28 July 2016,

having regard to the response of EUIPO lodged at the Court Registry on 10 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 30 January 2017,

further to the hearing on 22 September 2017,

gives the following

Judgment

 Background to the dispute

1        On 26 December 2011, the applicant, Stada Arzneimittel AG, obtained the registration, under the number 9 552 225, of the EU word mark Immunostad from the European Union Intellectual Property Office (EUIPO).

2        That registration had been applied for on 25 November 2010 and the EU trade mark application was published in Community Trade Marks Bulletin No 2011/001 of 3 January 2011.

3        The goods in respect of which registration was sought are in Classes 3 and 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

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

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

4        On 8 February 2013, Société de développement et de recherche industrielle, which became Vivatech and then Urgo recherche innovation et développement, the intervener, filed an application for a declaration that the contested mark was invalid in respect of the ‘pharmaceutical preparations; dietetic substances adapted for medical use’ in Class 5, on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and, more specifically, on the basis of Article 53(1)(a) (now Article 60(1)(a) of Regulation 2017/1001) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001). The application for a declaration of invalidity alleged that there was a likelihood of confusion with an earlier mark, namely the national word mark ImmunoStim, which is covered by French trade mark registration No 3432049 granted on 31 May 2006 in respect of, inter alia, ‘dietetic substances adapted for medical use, namely food supplements’ in Class 5.

5        By decision of 10 March 2015, the Cancellation Division declared the contested mark invalid in respect of the ‘pharmaceutical preparations; dietetic substances adapted for medical use’ in Class 5. It found that those goods and those covered by the earlier mark were either identical, as regards the ‘dietetic substances adapted for medical use’, or similar, as regards the ‘pharmaceutical preparations’, that the marks at issue were similar and that there was a likelihood of confusion on the part of the relevant public.

6        On 30 April 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

7        By decision of the Board of Appeal of 19 April 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the relevant public was both the general public and a more specialised public with expertise in the field of healthcare in France and that the level of attention of the relevant public varied from average to high in relation to dietetic substances and was relatively high in relation to pharmaceutical preparations. It found that, in view of the similarity of the goods at issue, the strong visual and phonetic similarity of the marks at issue and their conceptual similarity and the average degree of distinctiveness of the earlier mark, there was a likelihood of confusion.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including the costs of the proceedings before the Board of Appeal.

9        EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, and, secondly, infringement of Article 75 of that regulation (now Article 94 of Regulation 2017/1001).

 The first plea, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation

11      By its first plea, the applicant complains, in essence, that the Board of Appeal failed to take into account the part of the relevant public which would perceive the element ‘stim’ in the earlier mark as the abbreviation of the French word ‘stimuler’ and therefore as a descriptive reference to the goods covered by that mark. It submits that that error vitiates both the examination of the relevant factors underlying the finding of a likelihood of confusion and the assessment of the likelihood of confusion. In the context of that plea, the applicant puts forward, in essence, two complaints. The first concerns the contested decision in so far as it relates to the comparison of the marks at issue and the second concerns the part of that decision relating to the global assessment of the likelihood of confusion.

12      Pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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)(ii) and (iii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) and (iii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State and trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

13      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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

14      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 judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

15      It is in the light of those considerations that it must be assessed whether the Board of Appeal was right in finding that there was a likelihood of confusion in the present case.

 The relevant public

16      It must be held that the Board of Appeal was right in finding, findings which have not been challenged by the parties, in paragraphs 3 and 10 of the contested decision, first, that, since the application for a declaration of invalidity was based on French national registration No 3432049, the relevant territory with regard to which the likelihood of confusion had to be assessed was France, secondly, that the relevant public was the general public and a more specialised public with expertise in the field of health care in France and, thirdly, that the level of attention of the relevant public varied from average to high in relation to dietetic substances and was relatively high in relation to pharmaceutical preparations.

 The comparison of the goods

17      In the present case, the Board of Appeal was right in finding in paragraph 11 of the contested decision, a finding which has not been challenged by the parties, that the goods covered by the earlier mark were identical to the ‘dietetic substances adapted for medical use’ and similar to the ‘pharmaceutical preparations’ covered by the contested mark.

 The comparison of the marks at issue

18      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).

19      The Board of Appeal found, in the contested decision, that the two marks at issue were word marks, each of which consisted of ten letters. The marks have the first eight letters, namely ‘i’, ‘m’, ‘m’, ‘u’, ‘n’, ‘o’, ‘s’ and ‘t’, in common and differ only as regards their last two letters, ‘i’ and ‘m’ in the earlier mark and ‘a’ and ‘d’ in the contested mark.

20      Furthermore, the Board of Appeal found that each of the marks at issue consisted of two elements, the first of which, ‘immuno’, which is common to the marks at issue, alluded to the words ‘immunity’ and ‘immune system’ and would be associated with those words by the relevant public. As regards the second part of the two marks, the element ‘stim’ in the earlier mark and the element ‘stad’ in the contested mark, the Board of Appeal found that the relevant public consisted of two groups of consumers, on the one hand, consumers who did not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’ (‘to stimulate’) and, on the other hand, those who understood the element ‘stim’ in that sense. It based its analysis on the first of the two parts of the relevant public and thus observed that the two marks at issue did not contain any element which could be considered to be clearly more dominant, visually eye-catching, than the other elements.

21      On the basis of those findings, the Board of Appeal found that the marks at issue were highly similar visually and phonetically and that the marks were conceptually similar inasmuch as they both contained the element ‘immuno’, even though that coincidence was due to a non-distinctive element.

22      The applicant submits that the Board of Appeal did not correctly assess the distinctive and dominant elements of the marks at issue. It submits, in particular, that the element ‘stim’ in the earlier mark is descriptive with regard to the goods at issue and should not, therefore, have been taken into account by the Board of Appeal in the comparison of the marks. The applicant further states that since, like the element ‘stim’, the element ‘immuno’ is descriptive, only the element ‘stad’ in the contested mark has no descriptive meaning in respect of the goods at issue.

23      The applicant claims that the element ‘stad’ is therefore the only dominant and distinctive element in the two marks. It takes the view that if that had been taken into account by the Board of Appeal in its assessment of the visual, phonetic and conceptual similarities, it would not have found that the marks at issue are arbitrary terms with no specific meaning for many consumers despite the descriptive connotation of the initial part of the marks, ‘immuno’, and it would therefore have concluded that there was a very low degree of similarity between the marks at issue.

24      EUIPO and the intervener dispute the applicant’s arguments.

25      First of all, it must be held, in the first place, as the Board of Appeal found, that the two marks at issue each consist of a single word of ten letters, the first eight of which are identical.

26      In the second place, although the element ‘immuno’ is descriptive with regard to the goods covered by the marks at issue and is therefore weakly distinctive, the fact remains that the weak distinctive character of an element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Consequently, it cannot be ruled out that, in the perception of the relevant public, 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 (judgment of 10 July 2012, Clorox v OHIM — Industrias Alen (CLORALEX), T‑135/11, not published, EU:T:2012:356, paragraph 35). Likewise, despite its weak distinctive character, a descriptive element of a trade mark is likely to attract the attention of the relevant public because of its length and its position at the beginning of that mark (see, to that effect, judgment of 6 June 2013 in McNeil v OHIM — Alkalon (NICORONO), T‑580/11, not published, EU:T:2013:301, paragraph 63).

27      That is the case here as regards the element in common ‘immuno’, which contributes, to a not insignificant extent, to the overall impression created by the two marks at issue. That element consists of six of the ten letters that comprise the marks at issue. Moreover, it is situated at the beginning of the two marks, the part which is, in principle, more likely to catch the public’s attention (see, to that effect, judgment of 6 June 2013, Celtipharm v OHIM — Alliance Healthcare France (PHARMASTREET), T‑411/12, not published, EU:T:2013:304, paragraph 25 and the case-law cited).

–       The visual and phonetic similarities

28      As regards the visual and phonetic similarities, the Board of Appeal was right in finding, in paragraph 19 of the contested decision, that neither of the two marks at issue contained elements which could be considered to be dominant and visually eye-catching.

29      In that regard, it must be stated that the two marks at issue have in common not only the element ‘immuno’, consisting of the first six letters, ‘i’ ‘m’, ‘m’, ‘u’, ‘n’ and ‘o’, but also the seventh and eighth letters, namely ‘s’ and ‘t’, and that they differ only in their last two letters.

30      Although it is true that the last two letters in the contested mark, ‘a’ and ‘d’, differ from the last two letters in the earlier mark, ‘i’ and ‘m’, that difference alone cannot counteract the very strong visual and phonetic similarities resulting from the coincidence in the first eight letters of the two marks at issue and from the identical length of those marks.

31      As is clear from the case-law cited in paragraph 26 above, the first part of a trade mark normally has a greater impact, both visually and phonetically, than the last part of that mark. Furthermore, it must be pointed out that, even though the element ‘stad’ has no meaning for the relevant public, with the result that that public perceives it as a somewhat fanciful element, that does not, as the applicant claims, make it dominant.

32      Consequently, the Board of Appeal was right in finding, in paragraph 19 of the contested decision, that the two marks at issue were highly similar visually and phonetically.

–       The conceptual similarity

33      As regards the conceptual similarity, it must be pointed out, as the Board of Appeal stated, that the element ‘immuno’, which is common to the marks at issue, alludes to the words ‘immunity’ and ‘immune system’ and will be associated with those words by the relevant public. As the Board of Appeal observed, that element is defined in French language dictionaries as ‘([domaine de la] médecine) préfixe référant aux mécanismes immunitaires’ (‘(medicine) prefix referring to immunological mechanisms’), and that prefix generally appears in this form in medico-technical language. The element ‘immuno’ is therefore descriptive of the goods at issue and is associated with the concepts of immunity and the immune system.

34      Furthermore, as the Board of Appeal found in paragraph 20 of the contested decision, for the part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’, the two marks are, as a whole, arbitrary terms with no specific meaning, despite the descriptive connotation of the initial part ‘immuno’.

35      Consequently, the Board of Appeal was right in finding, in paragraph 19 of the contested decision, that both of the marks at issue referred to the concepts of immunity and the immune system and that those marks were therefore conceptually similar.

36      In the light of the foregoing considerations, it follows that it is necessary to uphold the Board of Appeal’s assessment that the marks at issue are, for the part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’, highly similar visually and phonetically, and conceptually similar.

37      As regards the part of the public which understands the element ‘stim’ as being the abbreviation of the French word ‘stimuler’, it is true that the last part of the earlier mark has a conceptual meaning, unlike the last element, ‘stad’, in the contested mark. However, the first element in each of the marks at issue refers directly and identically to the same concepts, namely those of immunity and the immune system. Accordingly, it must be held that, even if the element ‘stim’ in the earlier mark were understood as being the abbreviation of the French word ‘stimuler’, the resulting conceptual difference would not be capable of counteracting the conceptual similarity resulting from the first element, ‘immuno’, which the marks have in common. Consequently, even in that situation, some conceptual similarity between the marks at issue would have to be held to exist.

38      In the light of the foregoing considerations, it follows that the marks at issue are conceptually similar for the whole of the relevant public.

39      The first complaint, relating to the comparison of the marks at issue, must therefore be rejected.

 The likelihood of confusion

40      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

41      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35, and of 4 March 2009, Professional Tennis Registry v OHIM — Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY), T‑168/07, not published, EU:T:2009:51, paragraph 28).

42      According to the contested decision, the signs at issue are highly similar visually and phonetically, and conceptually similar. Furthermore, in the light of the identity or similarity of the goods at issue, there is, according to that decision, a likelihood of confusion, even if the distinctive character of the earlier mark is weak for a part of the relevant public.

43      By its second complaint, the applicant submits that there is no likelihood of confusion in the present case. First, it maintains that the Board of Appeal erred in taking into account, in assessing the likelihood of confusion, only the part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’. The applicant observes that the methodology of ‘dividing’ the relevant public and also the specific failure to take into account certain possible perceptions are in principle unlawful according to the judgment of 25 June 2015, Loutfi Management Propriété intellectuelle (C‑147/14, EU:C:2015:420).

44      In that regard, the applicant submits that it is possible to ‘divide’ the relevant public on the basis of its perception of the marks at issue only in cases where regard must be had to the understanding of specialist terms or foreign words, which can only be understood by a section of the public that objectively has specific foreign language skills or specific expertise. However, it takes the view that, in the present case, since the word ‘stimuler’ is neither a specialist term nor a foreign word, any French consumer would understand the element ‘stim’ as being the abbreviation of that word and that it is therefore wrong to ‘divide’ the relevant public.

45      Second, the applicant maintains that the choice to have regard only to the part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the word ‘stimuler’ conflicts with the submissions of the proprietor of the earlier mark, which stated that ‘stim’ is indeed the abbreviation of the French word ‘stimuler’.

46      Third, the applicant argues that leaving a discretion as to the part of the relevant public to be taken into consideration in the assessment of the likelihood of confusion could render such an assessment meaningless and circumvent the principle that elements of a mark which are objectively ineligible for protection cannot be relied on to substantiate a likelihood of confusion.

47      EUIPO and the intervener dispute the applicant’s arguments.

48      It must be held that, in the present case, the relevant public consists of two non-negligible groups of consumers, namely the consumers who do not understand the element ‘stim’ as the abbreviation of the French word ‘stimuler’ and those who understand the element ‘stim’ in that sense.

49      In that regard, it must be pointed out, as observed by EUIPO, that, in order to find that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood of confusion exists for the whole of the relevant public (see judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 115 and the case-law cited).

50      It is clear from the case-law that a finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgments of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraph 119, and of 24 June 2014, Hut.com v OHIM — Intersport France (THE HUT), T‑330/12, not published, EU:T:2014:569, paragraph 58 and the case-law cited,).

51      It is true that the Board of Appeal did not expressly mention the proportion of target consumers who understand the element ‘stim’ in the earlier mark as being the abbreviation of the French word ‘stimuler’. However, it is important to point out that it found, in paragraph 18 of the contested decision, that it ‘[wa]s not a given that consumers would pick up on this interpretation of the element “[s]tim” in the early [mark] — the association [wa]s not patently obvious’ and, in paragraph 20 of the contested decision, that ‘[t]he marks, [Immunostim and Immunostad] [we]re arbitrary terms with no specific meaning for many consumers despite the descriptive connotation of the initial part “immun[o]”’. Consequently, by those statements, the Board of Appeal found that many consumers, that is to say a relatively large part of the relevant public, would not attribute any meaning to the element ‘stim’ in the earlier mark.

52      Furthermore, as regards the judgment of 25 June 2015, Loutfi Management Propriété Intellectuelle (C‑147/14, EU:C:2015:420), to which the applicant refers, it must be held that that judgment, in which the facts differ from those in the present case, is irrelevant. The case which gave rise to that judgment involved trade marks consisting of foreign words which were indisputably understood by the whole of the relevant public. However, the present case concerns an abbreviation the meaning of which is not obvious in French and which is understood by only a part of the relevant public.

53      It follows that the applicant’s first argument, that it is unlawful to ‘divide’ the relevant public, must be rejected, since the applicant has not shown that the part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’ constitutes a negligible part of that public and that there is therefore a likelihood of confusion only for a negligible part of the relevant public.

54      As EUIPO has pointed out, the Board of Appeal, having found that there was a likelihood of confusion for the non-negligible part of the relevant public which does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’, was not required to analyse the likelihood of confusion for the part of the public which understands the element ‘stim’ in that sense. As is clear from the case-law cited in paragraphs 49 and 50 of the present judgment, it is sufficient, for it to be held that there is a likelihood of confusion, that that likelihood of confusion exists for a non-negligible part of the relevant public.

55      As regards its second argument, the applicant stated at the hearing that it followed from Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) that the Board of Appeal was not entitled to consider the facts in a way that was different from that in which they had been presented by the parties before it. The applicant stated that, consequently, since the intervener had admitted that the relevant public would recognise the element ‘stim’ as being the abbreviation of the word ‘stimuler’, the Board of Appeal could not, in its analysis of the likelihood of confusion, deny that fact, which it did by taking into account the part of the relevant public which does not understand the element ‘stim’ as the abbreviation of the word ‘stimuler’.

56      In that regard, it must be pointed out that that argument, assuming that it is admissible although it was explained only at the hearing, must, in any event, be rejected, since it is based on an incorrect presentation of the intervener’s observations in that regard. It is true that the intervener stated during the proceedings before the Cancellation Division that it was not disputing that the element ‘stim’ could be understood as being the abbreviation of the word ‘stimuler’. However, contrary to what the applicant claims, that can in no way be interpreted as meaning that the intervener admitted that the whole of the relevant public, without exception, understands the element ‘stim’ as being the abbreviation of the word ‘stimuler’.

57      Moreover, even if the intervener had admitted that the element ‘stim’ in the earlier mark was based on the word ‘stimuler’, that would also not call into question the Board of Appeal’s finding. The fact that the proprietor of a trade mark designs that mark with specific ideas or words in mind cannot have any bearing on whether a part of the relevant public will understand an element of that mark in a specific way.

58      Lastly, the applicant’s third argument, that the earlier mark is not a mark that is eligible for protection since it is purely descriptive, must be rejected. In invalidity proceedings brought against a trade mark of which it is the proprietor, the applicant cannot rely on an absolute ground for refusal which would preclude the registration of the earlier mark by a national office or by EUIPO from being valid. The absolute grounds for refusal set out in Article 7 of Regulation No 207/2009 (now Article 7 of Regulation 2017/1001) do not fall to be examined in invalidity proceedings brought against another trade mark which was registered at a later stage and that article is not one of the provisions in relation to which the legality of the contested decision must be assessed (see, to that effect, judgment of 30 June 2004, BMI Bertollo v OHIM — Diesel (DIESELIT), T‑186/02, EU:T:2004:197, paragraph 71).

59      Furthermore, the validity of the registration of a sign as a national trade mark cannot be called into question in proceedings concerning the registration of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 55).

60      In the light of the similarity of the marks at issue and the fact that the goods concerned are in part identical and in part similar, it must be held that the Board of Appeal was right in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

61      Consequently, the second complaint, relating to the likelihood of confusion, must be rejected.

62      In view of all of the foregoing findings, the first plea in law must be rejected.

 The second plea, alleging infringement of Article 75 of Regulation No 207/2009

63      The applicant complains that, in the contested decision, the Board of Appeal did not sufficiently explain the reasons which led it to take into consideration, for the purposes of finding that there was a likelihood of confusion, only the part of the relevant public that does not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’.

64      EUIPO and the intervener dispute that plea.

65      It must be borne in mind that, in order to satisfy the requirements of the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94(1) of Regulation 2017/1001), it is sufficient if the Board of Appeal sets out the facts and the legal considerations having decisive importance in the context of the decision that it is adopting (see judgment of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46 and the case-law cited).

66      In the present case, as is clear from the case-law cited in paragraphs 49 and 50 above, in order to be able to hold that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood of confusion exists for the whole of the relevant public. A finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient for an application for a declaration that a registered trade mark is invalid to be granted.

67      In the present case, as is clear from paragraph 51 above, the Board of Appeal stated, in a sufficiently clear manner and without erring in law in that regard, that there was a non-negligible part of the relevant public which did not understand the element ‘stim’ as being the abbreviation of the French word ‘stimuler’.

68      In those circumstances, the Board of Appeal could, in order to be able to find that there was a likelihood of confusion in the present case, confine itself to finding, as it did in paragraph 18 of the contested decision, that, for that non-negligible part of the relevant public, the earlier mark had a normal degree of distinctiveness as it had no straightforward meaning in relation to the goods in question. Consequently, the purpose of taking into account that part of the relevant public was to ascertain the earlier mark’s degree of distinctiveness, which is a factor to be taken into consideration in assessing the likelihood of confusion.

69      It follows that, for the purposes of finding that there was a likelihood of confusion, the Board of Appeal in no way needed to pursue its reasoning in order, in addition, expressly to take into consideration the part of the public which understands the element ‘stim’ as being the abbreviation of the French word ‘stimuler’.

70      It therefore set out its assessment of the factual findings and the legal considerations having decisive importance in the context of the decision in a sufficient manner, thus enabling the applicant to ascertain the reasons for that decision in order to defend its rights and enabling the Court to exercise its power of review of the legality of that decision.

71      The second plea in law must therefore be rejected as unfounded.

72      Consequently, the action must be dismissed in its entirety.

 Costs

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

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

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Stada Arzneimittel AG to pay the costs.

Delivered in open court in Luxembourg on 20 November 2017.

*      Language of the case: English.

© European Union
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