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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

2 March 2022 (*)

(EU trade mark – Opposition proceedings – Application for the EU word mark IALO TSP – Earlier international word mark HYALO – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Identification of a member of the Board of Appeal – Article 165(2) of Regulation 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)

In Case T‑333/20,

Fidia farmaceutici SpA, established in Abano Terme (Italy), represented by R. Kunz-Hallstein and H.P. Kunz-Hallstein, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and V. Ruzek, acting as Agents,

defendant,

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

Giuliani SpA, established in Milan (Italy), represented by S. de Bosio, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 17 March 2020 (Case R 2107/2019-5), relating to opposition proceedings between Fidia farmaceutici and Giuliani,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira (Rapporteur), President, M. Kancheva and T. Perišin, Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 1 June 2020,

having regard to the response of EUIPO lodged at the Court Registry on 15 October 2020,

having regard to the response of the intervener lodged at the Court Registry on 23 October 2020,

further to the hearing on 22 September 2021,

gives the following

Judgment

I.      Background to the dispute

1        On 10 January 2018, the intervener, Giuliani SpA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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).

2        Registration as a mark was sought for the word sign IALO TSP.

3        The goods in respect of which registration was sought are in Classes 1, 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 1: ‘Chemicals for use in the manufacture of cosmetics; chemical substances for use in the production of drugs; botanical extracts for use in making cosmetics; botanical extracts for use in producing dietary supplements; chemical substances for making dietary supplements; vitamins for use in the manufacture of food supplements; antioxidants for use in the manufacture of food supplements; vitamins for use in the manufacture of cosmetics; emollients for use in the manufacture of cosmetics; activators [chemicals]; biological activators; antimicrobial preservatives for cosmetics; antioxidants for use in the manufacture of cosmetics; protein for use in the manufacture of cosmetics; chemical additives for use in the manufacture of cosmetics; hyaluronic acid’;

–        Class 3: ‘Body cleaning and beauty care preparations; cosmetics and cosmetic preparations; cosmetic preparations for beautifying and caring for the hair, skin and skin appendages; skin and eye preparations and nail, eyelash and eyebrow care preparations; preparations and treatments for the hair, skin and skin appendages; cosmetics containing hyaluronic acid; shampoo; lotions; cleaning preparations for personal use; deodorants and antiperspirants; sun care preparations; compounds for skin care after exposure to the sun’s rays’;

–        Class 5: ‘Dietary supplements and dietetic preparations; dietary and vitamin/mineral supplements for the health, care and beautification of the hair and skin appendages; moisturising creams [pharmaceutical]; protective creams (medicated -); creams for dermatological use; body creams [medicated]; anti-itch creams; medicinal creams for the protection of the skin; skin care creams for medical use; creams (medicated -) for application after exposure to the sun; sunburn preparations for pharmaceutical purposes; nail care preparations for medical use; medical preparations for hair growth; medicinal hair growth preparations; skin care lotions [medicated]; antiseptic body care preparations; pharmaceutical preparations for skin care; pharmaceuticals for wound care; medicated lip care preparations; disinfectants and antiseptics; medicated and sanitising soaps and detergents; germicides; bactericides; anti-inflammatories’.

4        The trade mark application was published in European Union Trade Marks Bulletin No 2018/55 of 20 March 2018.

5        On 18 June 2018, the applicant, Fidia farmaceutici SpA, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the international registration designating the European Union in respect of the word mark HYALO, which was registered on 29 July 2016 under the number 1328073 in respect of goods in Classes 1, 3, 5 and 10 corresponding, for each of those classes, to the following description:

–        Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; raw material and semi-finished preparations on the basis of hyaluronic acid, its esters or derivatives; chemical products and esters or derivatives of hyaluronic acid for the manufacturing of pharmaceutical products or cosmetics’;

–        Class 3: ‘Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; creams for cleansing the face; creams for the body; anti-cellulite preparations; dermocosmetic preparations not for medical use; dermocosmetic and cosmetic preparations for the treatment of unaesthetic conditions of various origins; disinfectant soap; medicated soap; deodorant soap; antiperspirant soap; cosmetic creams; cosmetic preparations for skin care; pomades for cosmetic purposes; dental bleaching gels; preparations for personal hygiene or sanitary purposes; personal deodorants; massage gels other than for medical purposes; lip glosses; lipsticks; non-medicated douches’;

–        Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; fungicides; medicines, medicines; medical products, included in this class, namely substances and preparations of substances for diagnosis, prevention, monitoring, treatment or relief of injuries, diseases, or disabilities; pharmaceutical preparations for dermatological and gynecological use; parapharmaceutical products for dermatological and gynecological use; anti-itch creams, gels and sprays for external use [antipruritics]; lubricants for use with condoms; vaginal moisturizers; vaginal washes; personal sexual lubricants; antiseptics; detergents for medical use; pomades and ointments for medical use; tissues or gauzes impregnated with antibacterial preparations, with medical creams or medical lotions; creams, sprays, lotions, gels, or ointments for dermatological purposes, for wound healing and tissue repair; pharmaceutical preparations for the treatment of the mouth and teeth; minerals for medical use; vitamins; dietetic and nutritional supplements’;

–        Class 10: ‘Surgical and medical apparatus and instruments, syringes and cannulas, applicators and medical devices for the administration of pharmaceutical preparations; medical devices and products included in this class; apparatus and equipment for medical diagnostics, examination and monitoring; apparatus for medical imaging; surgical equipment for wound treatment; materials and products for suture and wound closing; suture materials’.

7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001.

8        On 23 July 2019, the Opposition Division rejected the opposition, on the ground that there was no likelihood of confusion.

9        On 19 September 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10      By decision of 17 March 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In essence, it found that, taking into account the low degree of visual similarity, the fact that the goods were mainly purchased visually, the high degree of phonetic similarity for part of the relevant public, which pronounced the beginnings of the words identically, the conceptual dissimilarity and the low degree of distinctiveness of the earlier mark, a likelihood of confusion could safely be excluded with regard to the relevant public, even if the goods were identical.

II.    Forms of order sought

11      The applicant claims, in essence, that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

13      The intervener contends that the Court should dismiss the action.

III. Law

A.      The issue of whether the document submitted at the hearing is admissible

14      At the hearing on 22 September 2021, the applicant submitted a new document, consisting of a decision of the Fifth Board of Appeal of EUIPO of 13 July 2020 (Case R 2850/2019-5), relating to opposition proceedings between itself and another company. The applicant justified the belated submission of that document by the fact that that decision of the Fifth Board of Appeal was adopted after the present action had been brought.

15      EUIPO did not have an objection to the submission of that document, unlike the intervener, which submitted that it was inadmissible owing to its belated nature.

16      In that regard, it must be borne in mind that Article 85(3) of the Rules of Procedure of the General Court provides that ‘the main parties may … produce or offer further evidence before the oral part of the procedure is closed …, provided that the delay in the submission of such evidence is justified’.

17      In the present case, it must be pointed out that the decision of the Fifth Board of Appeal of 13 July 2020 postdates the commencement of the applicant’s action, which took place on 1 June 2020, with the result that the submission of that decision, for the first time before the Court, on 22 September 2021, before the oral part of the procedure was closed, is justified within the meaning of Article 85(3) of the Rules of Procedure.

18      In those circumstances, it must be held that the submission of that document is admissible under Article 85(3) of the Rules of Procedure.

B.      Substance

19      In support of the action, the applicant relies on four pleas in law. The first plea alleges infringement of Article 165(1) of Regulation 2017/1001 and of Articles 32(f) and 39(5) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). The second plea alleges infringement of Articles 94(1) and 166(4)(c) of Regulation 2017/1001, of Articles 32(f) and 39(5) of Delegated Regulation 2018/625 and of the principles of sound administration and equal treatment. The third plea alleges infringement of Article 8(1)(b) of Regulation 2017/1001. The fourth plea alleges infringement of the obligation to state reasons and of the principles of sound administration and equal treatment.

1.      The first plea, alleging infringement of Article 165(1) of Regulation 2017/1001 and of Articles 32(f) and 39(5) of Delegated Regulation 2018/625

20      The applicant submits, in essence, that the contested decision infringes, first, Article 165(1) of Regulation 2017/1001, which requires the decision to be taken by three appointed members of the Board of Appeal, and, secondly, Articles 32(f) and 39(5) of Delegated Regulation 2018/625, which provide that the decision must contain the signature of all the members who took part in that decision. That obligation implies, according to the applicant, that the persons who took the decision must be identifiable. It argues that that is not the case here, as the name of one of the signatories, namely ‘C. Govers’, does not correspond to the name of a member of the Board of Appeal.

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

22      It must be pointed out at the outset that it is not Article 165(1), but Article 165(2) of Regulation 2017/1001, which provides that the decisions of the Boards of Appeal are to be taken by three members. Consequently, the applicant must be regarded as alleging infringement of Article 165(2) of Regulation 2017/1001.

23      It must also be pointed out that Articles 32(f) and 39(5) of Delegated Regulation 2018/625 specify that decisions of the Boards of Appeal must contain the name and the signature of the members who took part in those decisions.

24      By its arguments, the applicant alleges, in essence, infringement of essential procedural requirements, inasmuch as the procedural rules relating to the adoption of the contested decision were not, in its view, complied with. The applicant submits, in the present case, that the contested decision was signed by a person who cannot be identified as a member of one of the Boards of Appeal of EUIPO, with the result that the decision does not seem to have been taken by a Board of Appeal consisting of three members, in accordance with Article 165(2) of Regulation 2017/1001.

25      It must be pointed out, in the present case, that the parties agree that the contested decision was given by the Fifth Board of Appeal of EUIPO, composed of A. Pohlmann, V. Melgar and C. Govers.

26      The parties also agree that there is no ‘C. Govers’ among the members of the Fifth Board of Appeal or among the members of another Board of Appeal. Of the members of all the Boards of Appeal, only one person has the name of ‘Govers’. He is a member of the Fifth Board of Appeal who is called ‘Jan-Kees Govers’.

27      However, it is apparent from the explanations provided by EUIPO in its response and at the hearing that ‘C. Govers’ refers to the member of the Fifth Board of Appeal called ‘Jan-Kees Govers’, whose full name is Cornelius Johannes Martinus Ambrosius Govers, ‘Kees’ being the Dutch equivalent of the Roman name ‘Cornelius’. Consequently, the reference to ‘C. Govers’ in the contested decision is, in actual fact, a reference to ‘Jan-Kees Govers’, a member of the Fifth Board of Appeal.

28      It follows that, contrary to what the applicant claims, the Board of Appeal did not, in adopting the contested decision, infringe either Article 165(2) of Regulation 2017/1001 or Articles 32(f) and 39(5) of Delegated Regulation 2018/625.

29      Furthermore, as has been pointed out in paragraph 26 above, no other member of the Boards of Appeal is called ‘Govers’, with the result that that member was easily identifiable by the applicant.

30      The present plea must therefore be rejected as unfounded.

2.      The second plea, alleging infringement of Articles 94(1) and 166(4)(c) of Regulation 2017/1001, of Articles 32(f) and 39(5) of Delegated Regulation 2018/625 and of the principles of sound administration and equal treatment

31      The applicant submits that its appeal was initially allocated to the Second Board of Appeal before being reallocated to the Fifth Board of Appeal. It claims that that decision to reallocate is not foreseen either in Regulation 2017/1001 or in Delegated Regulation 2018/625. Furthermore, it submits that that decision does not specify either why that reallocation was justified or the legal reasons which justified it, with the result that the Court is not in a position to exercise its power to review the validity of the administrative measure and therefore of the entire decision.

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

33      It must be pointed out that, by its arguments, the applicant in actual fact disputes, not the contested decision, but the decision of 20 December 2019 of the Presidium of the Boards of Appeal which ordered the case to be reallocated to the Fifth Board of Appeal, as the applicant confirmed at the hearing, in reply to a question put to it by the Court.

34      However, the legality of the Board of Appeal’s decision must be assessed solely on the basis of the factual and legal findings in the contested decision. In accordance with Article 72(1) of Regulation 2017/1001, actions may be brought before the General Court only against decisions of the Boards of Appeal, with the result that it is only pleas directed against those decisions which are admissible in such an action (see judgment of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23 and the case-law cited).

35      It follows that the applicant’s arguments are inadmissible, without it being necessary to examine them further.

36      The present plea must therefore be rejected as inadmissible.

3.      The third plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001

37      The applicant claims, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion in the present case. The applicant disputes, in particular, the Board of Appeal’s findings relating to the assessment of the earlier mark’s distinctiveness, to the conceptual similarity of the signs at issue and to the global assessment of the likelihood of confusion.

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

39      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

40      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. 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).

41      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).

42      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, 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 76 and the case-law cited).

(a)    The relevant public

43      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

44      In paragraphs 22 to 23 of the contested decision, the Board of Appeal found, in the light of the nature of the goods at issue, that the relevant public consisted both of the general public and of a public of professionals.

45      The Board of Appeal found, more specifically, that the goods in Class 1 were aimed at a public of professionals, that the goods in Class 3 were mainly aimed at the general public, which had a level of attention that could vary from average to high, depending on the nature of the goods, the frequency of purchase, their price and whether they affected health, and that the goods in Classes 5 and 10 were aimed both at the general public, which had a higher-than-average level of attention, and at professionals in the medical and pharmaceutical field, who had a high level of attention.

46      In paragraph 25 of the contested decision, the Board of Appeal stated that, since the earlier mark was an international registration designating the European Union, the relevant territory was that of the European Union as a whole.

47      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

(b)    The comparison of the goods at issue

48      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

49      In paragraph 26 of the contested decision, the Board of Appeal stated that, for reasons of procedural economy, it would proceed, as the Opposition Division had done, with the assessment of the likelihood of confusion by presupposing that the goods at issue were identical.

50      That choice on the part of the Board of Appeal, which is not, moreover, disputed by the applicant, must be confirmed.

(c)    The distinctive character of the earlier mark

51      The applicant claims, in essence, that the Board of Appeal erred in finding that the earlier mark had a low degree of distinctiveness. It submits that the evidence submitted by the intervener and the previous decisions of EUIPO cited in the contested decision do not bear out the allegedly widespread use on the market of the term ‘hyal’ with regard to the goods at issue. Furthermore, it argues that simple pictures from the internet cannot, without additional evidence, serve as evidence of the use alleged.

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

53      It must be pointed out at the outset that the applicant did not, in the course of the proceedings before EUIPO, submit that its earlier mark was highly distinctive on account of intensive use or a reputation.

54      It must be borne in mind that the Court of Justice has already held that, in order to avoid infringing Article 8(1)(b) of Regulation 2017/1001, it is necessary to acknowledge that a mark which has been registered has a certain degree of distinctiveness. However, although it must be acknowledged, in the light of the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraph 47), that a term which constitutes the only element of a mark has some independent distinctive character because it has been registered, that cannot, however, mean that that term must be acknowledged as having such a high degree of distinctiveness that it gives rise to an unconditional right to oppose the registration of every later trade mark in which it appears (see, to that effect, judgment of 7 May 2019, Sona Nutrition v EUIPO – Solgar Holdings (SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA), T‑152/18 to T‑155/18, not published, EU:T:2019:294, paragraphs 39 and 40 and the case-law cited).

55      The Board of Appeal found in the contested decision, on the basis of the evidence submitted by the intervener and previous decisions of EUIPO, that the element ‘hyal’ in the earlier mark could be understood, by the part of the relevant public which consisted of professionals and of the general public which had been exposed to intensive and widespread use of that element, as a reference to hyaluronic acid and therefore as designating a substance or the purpose (glassy effect) of the goods in Classes 1, 3 and 5. The Board of Appeal added that that reference to hyaluronic acid did not have any connection with the goods in Class 10, goods in respect of which the mark therefore remained distinctive. The Board of Appeal also stated that the letter ‘o’ at the end of the earlier mark did not alter that assessment. The Board of Appeal thus concluded that, for professionals and a significant part of the general public, the earlier mark as a whole had to be considered to be allusive and therefore distinctive to a low degree with respect to the goods in Classes 1, 3, 5 and 10.

56      The applicant disputes that finding on the part of the Board of Appeal and submits, first, that the previous decisions of EUIPO which were referred to in the contested decision do not support the perception, by the relevant public, of the element ‘hyal’ as a reference to hyaluronic acid and, secondly, that the evidence submitted by the intervener does not substantiate the alleged use on the market of the element ‘hyal’ in connection with the goods at issue.

57      In that regard, first, it must be pointed out that, contrary to what the applicant submits, it is indeed apparent from the previous decisions of EUIPO referred to in paragraphs 37 to 39 of the contested decision, which are attached as annexes to the application and to the intervener’s response, that the Boards of Appeal found that the element ‘hyal’ could be understood by professionals and at least by the general public which had been exposed to intensive and widespread use of that element, as referring to hyaluronic acid, and therefore as designating the nature, purpose or properties of the goods in Classes 1, 3 and 5.

58      In particular, on the one hand, the Board of Appeal found in decision R-613/2019-5, first of all, in paragraph 37 of that decision, that, even if the relevant professional public did not understand the meaning of the term ‘hyal’, it was capable of perceiving the sign HYAL as referring directly to the ingredient hyaluronic acid, that is to say, a substance which is widely used in pharmaceutical and cosmetic preparations. Next, the Board of Appeal found, in paragraph 50 of that decision, that the term ‘hyal’ was descriptive of the relevant goods in Class 1, since it was used as a scientific abbreviation of the chemical substance concerned, the enzyme hyaluronidase. The Board of Appeal also stated, in paragraph 37 of that decision, that the evidence showed that there was, for the professional public, a close operational relationship between the terms hyaluronic acid and hyaluronidase. Lastly, the Board of Appeal, in paragraph 57 of that decision, endorsed the Cancellation Division’s finding that, at least for the professional public, the term ‘hyal’ could indicate that the relevant goods in Class 5 contained hyaluronic acid.

59      Furthermore, the Board of Appeal observed, in paragraph 59 of the decision R-613/2019-5, that the general public might also understand the term ‘hyal’ as a reference to hyaluronic acid. It stated that that term was well known to that public and that, since that substance was widely used for medical or cosmetic purposes and was contained in many beauty and medicinal products, the general public might also understand that term as descriptive of goods which contained hyaluronic acid and had specific properties (hydrating and moisturising effects).

60      On the other hand, the assessment of the Board of Appeal in paragraph 30 of decision R-1316/2013-5, in which it stated that the general public would probably perceive the term ‘hyal’ as a fanciful term, does not contradict the assessment referred to in the paragraph above, because the Board of Appeal’s assessment in paragraph 30 of that decision related to the general public in general for which the element ‘hyal’ did not evoke any meaning, whereas the Board of Appeal’s assessment in paragraph 59 of decision R-613/2019-5 related to the general public which is exposed to intensive and widespread use of that element. Moreover, in paragraph 40 of the contested decision, the Board of Appeal also stated that, for the remaining part of the public in the European Union, that is to say, in the present case, for the part of the general public for which the element ‘hyal’ did not evoke any meaning, the earlier mark was distinctive.

61      Secondly, it must be stated that, contrary to what the applicant claims, the evidence submitted by the intervener, which consisted of images of pharmaceutical products and cosmetics from different producers, which contain the element ‘hyal’ in their signs, such as Gen-Hyal, HYDRA-HYAL, Hyalu Cell, Hyal Ceutic, Hyal-Drop, and GROW HYAL B5 CREAM, clearly shows that the element ‘hyal’ is used on the market in connection with the goods at issue.

62      It follows from all of the foregoing that the Board of Appeal, on the basis of the evidence submitted by the intervener and the previous decisions of EUIPO, could, without making any error of assessment, find that the element ‘hyal’ in the earlier mark could be understood, by the part of the relevant public consisting of professionals and of the general public which had been exposed to intensive and widespread use of that element, as a reference to hyaluronic acid, and that the earlier mark was therefore, as a whole, distinctive to a low degree.

63      That finding cannot be called into question by the applicant’s argument that the use of the mark Hyal-Drop on the market cannot be relied on in support of the weakening of the distinctiveness of the earlier mark, since the use of that mark constitutes use of its own mark.

64      It is sufficient to state, as has been pointed out in particular in paragraph 61 above, that the Board of Appeal did not determine the distinctiveness of the earlier mark solely on the basis of the use of the mark Hyal-Drop on the market.

65      That finding can also not be called into question by the applicant’s argument that the earlier mark is HYALO and not HYAL. According to the applicant, the Board of Appeal did not show that the term ‘hyalo’ had been extensively used on the market as a reference to hyaluronic acid and that it was perceived as such by the relevant public.

66      However, it is sufficient to point out that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (see judgment of 6 April 2017, Policolor v EUIPO – CWS-Lackfabrik Conrad W. Schmidt (Policolor), T‑178/16, not published, EU:T:2017:264, paragraph 43 and the case-law cited). It is apparent from the foregoing that the term ‘hyal’ will be perceived by the majority of the relevant public as a reference to hyaluronic acid, with the result that the earlier mark will be broken down, by the majority of the relevant public, into two elements, namely ‘hyal’, which will be associated with hyaluronic acid, and the letter ‘o’, which will not have any meaning in the present case. Consequently, it must be held that the presence of the letter ‘o’ at the end of the earlier mark will not preclude a large part of the relevant public from being capable of making a connection between the earlier mark and hyaluronic acid.

67      In any event, it must be borne in mind that a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

(d)    The comparison of the signs at issue

68      According to settled 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 (see judgment of 1 March 2016, BrandGroup v OHIM – Brauerei S. Riegele, Inh. Riegele (SPEZOOMIX), T‑557/14, not published, EU:T:2016:116, paragraph 29 and the case-law cited).

69      In the present case, the marks to be compared are as follows:

–        the mark applied for is the word sign IALO TSP.

–        the earlier mark is the word sign HYALO.

(1)    The distinctive elements of the mark applied for

70      In paragraph 44 of the contested decision, the Board of Appeal observed that the mark applied for was composed of the elements ‘ialo’ and ‘tsp’. It also stated in that paragraph that the element ‘ialo’ had no meaning for the relevant public and was therefore distinctive.

71      In paragraph 46 of the contested decision, the Board of Appeal, like the Opposition Division, found that the element ‘tsp’ was, at least, weakly distinctive for the experts in the chemical and medical or pharmaceutical sector, for whom that element related to a chemical substance used in the relevant goods. By contrast, it found that that element would not evoke any concept for the general public and that it was therefore distinctive.

72      Those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

(2)    The similarity of the signs at issue

(i)    The visual similarity

73      The Board of Appeal pointed out, in paragraph 48 of the contested decision, that the signs at issue coincided in the group of letters ‘alo’, which constituted the final part of the sole element in the earlier mark and the last three letters of the first element in the mark applied for, and differed in their initial letters, namely the group of letters ‘hy’ in the earlier mark and the letter ‘i’ in the mark applied for.

74      The Board of Appeal stated, in paragraph 51 of the contested decision, that those differences would attract the attention of the relevant public. It pointed out that, for the general public, the element ‘tsp’, which did not exist in the earlier mark, enhanced the visual differences.

75      The Board of Appeal concluded, in paragraph 52 of the contested decision, that, taking into account the importance of the beginning of a mark within the overall visual impression, the length of the first elements of the signs and the different second element of the mark applied for, which had no counterpart in the earlier mark, the signs at issue were visually similar, at most, to a low degree.

76      Those assessments on the part of the Board of Appeal, which are not disputed by the applicant, must be upheld.

(ii) The phonetic similarity

77      In paragraph 53 of the contested decision, the Board of Appeal, first of all, pointed out that the pronunciation of the signs at issue coincided in the sound of the group of letters ‘alo’ placed at the end of the earlier mark and at the end of the first element in the mark applied for, but differed, for the general public, in the sound of the element ‘tsp’ in the mark applied for, which had no counterpart in the earlier mark.

78      Next, it stated that, as regards the pronunciation of the beginnings of the signs, it had to be noted that, in some languages of the European Union, the group of letters ‘hy’ in the earlier mark and the letter ‘i’ in the mark applied for would be pronounced identically, whereas, in other languages of the European Union, they would be pronounced differently.

79      Lastly, it concluded that, for the Spanish- and Italian-speaking parts of the public, the signs at issue were highly similar, whereas, for the rest of the public in the European Union, they were, in the light of their concision, similar to, at most, an average degree.

80      Those assessments on the part of the Board of Appeal, which are not disputed by the applicant, must be upheld.

(iii) The conceptual similarity

81      The applicant submits that the Board of Appeal’s conclusion is, when looking at it from the Italian consumer’s perspective, inconsistent. It argues that the reasoning of the Board of Appeal implies, in essence, that the Italian consumer would perceive the element ‘hyal’ in the earlier mark as meaning ‘acido ialuronico’ (hyaluronic acid) and would understand it as alluding to that substance because he or she is familiar with the English name of the substance, but would, by contrast, think that the element ‘ialo’ in the mark applied for has no meaning, although the Italian term for hyaluronic acid is ‘acido ialuronico’. The applicant submits, however, on the one hand, that, if, for the Italian consumer, ‘hyal’ alluded to ‘acido ialuronico’, ‘ial’, which is closer to ‘acido ialuronico’ than ‘hyal’, would a fortiori be understood by that consumer as an allusion to ‘acido ialuronico’. It argues that it follows that the signs at issue would be conceptually identical. It submits, on the other hand, that, if the Italian consumer was not familiar with the term ‘acido ialuronico’, he or she would not, a fortiori, be familiar with the term hyaluronic acid, with the result that the conceptual comparison of the signs would be neutral.

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

83      It must be pointed out at the outset that the Board of Appeal stated, in paragraph 55 of the contested decision, that the element ‘ialo’ in the mark applied for had no meaning for the whole of the relevant public, whereas the earlier mark was linked for professionals and a significant part of the general public to hyaluronic acid. It also stated that the earlier mark did not evoke any concept for another part of the general public.

84      In paragraph 58 of the contested decision, the Board of Appeal drew a distinction between the assessment of the conceptual similarity of the signs at issue on the basis of the different parts of the relevant public. It thus found, in essence, that, on the one hand, the signs were not similar for professionals and for the part of the general public for which the element ‘hyal’ in the earlier mark evoked a concept. It found, on the other hand, that the comparison was not possible for the part of the public for which the signs at issue did not evoke any concept. It took the view that, for that part of the public, the conceptual aspect would not influence the overall comparison of the signs.

85      The applicant disputes the Board of Appeal’s conclusion solely as regards the professionals and the general public for which the element ‘hyal’ in the earlier mark evokes a concept. It submits that, for that part of the relevant public, the signs at issue are identical from the perspective of the Italian consumer.

86      The applicant’s line of argument is based, in essence, on the premiss that the Italian consumer, since he or she will perceive the element ‘hyal’ in the earlier mark as a reference to hyaluronic acid, will necessarily understand the group of letters ‘ial’ in the word element ‘ialo’ of the mark applied for as an allusion to ‘acido ialuronico’.

87      In that regard, it must be pointed out, first, that the applicant has not provided any evidence to show that the Italian consumer will understand the group of letters ‘ial’ or ‘ialo’ as a reference to hyaluronic acid. As is stated by EUIPO, the applicant has not proved that the group of letters ‘ial’ or ‘ialo’ have been used on the Italian market in order to refer to hyaluronic acid. The applicant only established, in the course of the proceedings before EUIPO, that the expression ‘hyaluronic acid’ is translated into Italian as ‘acido ialuronico’. It is apparent, on the contrary, from Annexes 14 and 16 to the intervener’s response, which reproduce internet searches regarding those groups of letters, that they do not have any specific meaning, let alone any connection with hyaluronic acid. The applicant cannot therefore usefully dispute the Board of Appeal’s conclusion by confining itself to presuming that the Italian consumer, on account of the greater visual proximity of the element ‘ial’ or ‘ialo’ to ‘ialuronico’ than that of the element ‘hyal’, will understand the mark applied for as a reference to hyaluronic acid.

88      Secondly, it must be pointed out that the applicant does not take the word element ‘tsp’ in the mark applied for into account in its assessment. However, as has been stated in paragraph 71 above, that element is, at least for the general public, a distinctive element of the mark applied for, which has no counterpart in the earlier mark and cannot be disregarded when comparing the signs at issue. Consequently, even if the Italian consumer were to understand the groups of letters ‘ial’ or ‘ialo’ as references to hyaluronic acid, the signs at issue could not, in any event, be held to be conceptually identical.

89      It follows from the foregoing considerations that the applicant’s line of argument is not capable of calling into question the Board of Appeal’s conclusion, which must, moreover, be upheld.

90      According to the case-law, first, when the relevant public does not understand the meaning of the words of which marks consist, it is impossible to carry out a conceptual comparison (see judgment of 23 October 2017, Tetra Pharm (1997) v EUIPO – Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 66 and the case-law cited).

91      Secondly, two signs are not conceptually similar where one has no meaning while the other evokes a concept (see judgment of 7 March 2019, Laverana v EUIPO – Agroecopark (VERA GREEN), T‑106/18, not published, EU:T:2019:143, paragraph 118 and the case-law cited).

92      In the present case, it has been held in paragraph 62 above that the element ‘hyal’ in the earlier mark could be understood, by the part of the relevant public consisting of professionals and of the general public which had been exposed to intensive and widespread use of that element, as a reference to hyaluronic acid.

93      It has been pointed out in paragraph 87 above that the applicant has not proved that the mark applied for has a meaning for the relevant public.

94      In those circumstances, the Board of Appeal was entitled to find, without making any error of assessment, first, that the signs at issue were not conceptually similar for professionals and for the part of the general public for which the element ‘hyal’ in the earlier mark evoked a concept and, secondly, that the conceptual comparison was not possible for the part of the public for which the marks at issue did not evoke any concept.

95      In view of all of the foregoing, it must be held that the signs at issue are, at best, visually similar to a low degree, highly similar phonetically and conceptually dissimilar.

(e)    The global assessment of the likelihood of confusion

96      The applicant disputes the Board of Appeal’s finding that there is no likelihood of confusion and submits, in essence, first, that the Board of Appeal’s statement that all of the goods at issue were not among the goods and services commonly ordered orally cannot be accepted in its universality. It argues that that statement is contrary to experience, especially as regards the goods in Class 5. It submits that it is evident that the goods at issue are neither homogeneous nor similar, with the result that the Board of Appeal should not have treated them uniformly. Furthermore, it contends that there is no evidence and, for the most part, no reasoning in support of that statement. It submits that relying on that assumption constitutes an infringement of the rule that the parties should be heard. Secondly, the applicant claims that the Board of Appeal attached too much importance in the assessment of the likelihood of confusion to the allegedly weak distinctiveness of the earlier mark and to the visual comparison of the signs. It submits that it especially failed to take account of the fact that the similarity of one single element of comparison, in particular a phonetic similarity with regard to word marks, may give rise to a likelihood of confusion, if the goods are identical. Furthermore, it argues that the identity of the goods and the high degree of phonetic similarity cannot be offset by the conceptual dissimilarity or by the low degree of visual similarity of the signs. Lastly, it submits that the Board of Appeal did not take into account the fact that the average consumer only rarely has a chance to compare the various marks directly and must rely on his or her imperfect recollection of them.

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

98      The Board of Appeal found, in essence, that, taking into account the level of attention of the public, which varied from average to high depending on the nature of the public and of the goods concerned, the low degree of visual similarity, the fact that the goods were mainly purchased visually, the high degree of phonetic similarity for part of the public, which pronounced the beginnings of the words identically, the conceptual dissimilarity and the low degree of distinctiveness of the earlier mark, a likelihood of confusion on the part of the relevant public could safely be excluded, even if the goods were identical.

99      The applicant disputes that conclusion on the part of the Board of Appeal and claims, first, that it is not supported by the findings in the contested decision and, secondly, that the Board of Appeal did not take account of the fact that the phonetic similarity might give rise to a likelihood of confusion, in particular if the goods are identical.

100    It must be pointed out at the outset, first, that 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

101    Next, it must be stated that the average consumer only rarely has a chance to compare the various marks directly, so he or she must rely on his or her imperfect recollection of them (see judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 119 and the case-law cited).

102    Lastly, it must be pointed out that 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 to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraphs 49 and 50 and the case-law cited).

103    In the present case, it is apparent from the foregoing considerations that, first, the goods at issue are aimed both at professionals, whose level of attention will be high, and at the general public, the level of attention of which will vary from average to high depending on the nature of the goods.

104    Secondly, the signs at issue are, on the one hand, visually similar to a low degree and, on the other hand, highly similar phonetically for the Spanish- and Italian-speaking parts of the public, which pronounce the beginnings of the signs identically, and phonetically similar to an average degree for the rest of the relevant public.

105    Thirdly, the applicant has not provided any evidence which is capable of calling into question the Board of Appeal’s findings that, first, the earlier mark is distinctive to a low degree and, secondly, the signs at issue are either conceptually dissimilar or conceptually neutral, depending on whether or not the element ‘hyal’ in the earlier mark evokes a concept for the relevant public.

106    It follows that, in the context of a global assessment of the likelihood of confusion, it must be held that there is, in the present case, no likelihood of confusion, even though the goods at issue have been considered to be identical.

107    In the light of the foregoing considerations, it must be held that the Board of Appeal did not make any error of assessment in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

108    The applicant’s arguments cannot cast doubt on that finding.

109    In the first place, the applicant claims that the Board of Appeal erred in finding that all of the goods at issue were not among the goods and services commonly ordered orally.

110    In that regard, it must be pointed out that, although it is true that the Board of Appeal stated, in paragraph 64 of the contested decision, that ‘the goods included in Classes 1, 3, 5 and 10 are not among the goods and services commonly ordered orally’, it cannot, however, as the applicant has done, be deduced from that that the Board of Appeal found that all of the goods at issue could not be ordered orally. The use, in the present case, of the adverb ‘commonly’ introduces a qualification as regards the absolute nature of that statement.

111    Furthermore, in paragraph 67 of the contested decision, the Board of Appeal expressly stated that some of the goods in Classes 1, 5 and 10 could be ordered orally.

112    Consequently, contrary to what the applicant claims, the Board of Appeal did not, in the context of its global assessment of the likelihood of confusion, regard all the goods at issue in a uniform and undifferentiated manner.

113    The applicant’s argument must therefore be rejected as having no factual basis.

114    Accordingly, it follows that the applicant’s argument that that statement on the part of the Board of Appeal is not supported by any evidence and any reasoning must be rejected as unfounded, since it is based on the incorrect premiss that the Board of Appeal found that all the goods at issue were not among the goods and services commonly ordered orally.

115    In the second place, the applicant claims that the Board of Appeal erred in attaching too much importance to the distinctiveness of the earlier mark and to the low degree of visual similarity between the signs at issue. It submits that it did not, in particular, sufficiently take into account the high degree of phonetic similarity between those signs.

116    In that regard, it must be stated at the outset that it has been pointed out in paragraph 98 above that the conclusion that there was no likelihood of confusion which the Board of Appeal reached in the present case was based on the level of attention of the relevant public, the distinctiveness of the earlier mark, the visual, phonetic and conceptual similarity of the signs at issue and the fact that the goods at issue are mainly purchased visually.

117    In the present case, the Board of Appeal stated, in paragraph 65 of the contested decision, that the phonetic similarity remained a relevant factor in the present case. It stated that that similarity was, however, counteracted by the visual and conceptual dissimilarities.

118    Accordingly, it must be borne in mind that the global assessment of the likelihood of confusion implies that conceptual differences between the signs at issue can counteract phonetic and visual similarities between those two signs, provided that at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 74 and the case-law cited).

119    It must also be borne in mind that, although it is possible that mere phonetic similarity between two trade marks may create a likelihood of confusion, that finding is not, however, in itself a sufficient basis for holding that the marks in question, each considered as a whole, are similar. Consequently, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market. The importance of the elements of similarity or dissimilarity between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by them are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to those goods, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the relevant goods are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs. Likewise, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (see judgment of 23 May 2007, Henkel v OHIM – SERCA (COR), T‑342/05, not published, EU:T:2007:152, paragraphs 51 to 53 and the case-law cited).

120    First, it must be stated that it has been pointed out in paragraph 94 above that the Board of Appeal was right in finding that the signs at issue were either conceptually dissimilar or conceptually neutral, depending on whether or not the element ‘hyal’ in the earlier mark evoked a concept for the relevant public.

121    Secondly, the Board of Appeal was right in stating, in paragraph 66 of the contested decision, that, with regard to the goods in Class 3, since they were mostly ordinary consumer products that were commonly purchased in supermarkets or establishments in which goods are arranged on shelves, consumers were guided by the visual impact of the mark they were looking for. It pointed out that the same finding also applied to the goods in Class 5 that could be purchased without a medical prescription, to the extent that they were usually placed on shelves in stores and consumers were guided by the visual impact. Consequently, it found that, for all the aforementioned goods, the weight of the phonetic similarity in the global assessment was diminished.

122    In paragraph 67 of the contested decision, the Board of Appeal was also right in noting, as regards the remaining goods in Class 5 and the goods in Classes 1 and 10, that, even if the phonetic similarity was more relevant, since some of those goods could be ordered orally, the high level of attention of the relevant public, namely of both professionals and the general public, the very low degree of visual similarity for a significant part of the relevant public and the conceptual dissimilarities minimised the risk of confusion and led to the conclusion that the public would notice the visual and conceptual differences which counteracted the phonetic similarities.

123    It follows from the foregoing, contrary to what the applicant claims, first, that the high degree of phonetic similarity between the signs at issue for part of the relevant public does not, in the present case, make it possible to conclude that there is a likelihood of confusion and, secondly, that the Board of Appeal did not, in the present case, attach too much importance to the distinctiveness of the earlier mark and to the visual similarity between the signs at issue, and that, taking into account the due significance of the relative weight of each of those factors, it carried out a global assessment of the likelihood of confusion which did not contain any error of assessment.

124    The applicant’s line of argument must thus be rejected as unfounded.

125    Accordingly, the present plea must be rejected as unfounded.

4.      The fourth plea, alleging infringement of the obligation to state reasons and of the principles of sound administration and equal treatment

126    The applicant claims, in essence, that the Board of Appeal disregarded its obligation to state reasons and infringed the principles of equal treatment and sound administration by not stating in a clear and specific manner the reasons which had led it to depart from the previous decisions and practice of EUIPO, and, in particular, from the decision of the Fourth Board of Appeal of 22 April 2009 (Case R 844/2007-4) and the judgment of 13 June 2019, Pet King Brands v EUIPO – Virbac (SUIMOX) (T‑366/18, not published, EU:T:2019:410). It submits that the Board of Appeal also infringed its obligation to state reasons by not, with regard to all of the goods at issue, stating the reasons for its statement that those goods were not among the goods commonly ordered orally.

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

128    In that regard, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraph 15 and the case-law cited).

129    Furthermore, the obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 12 March 2020, Jokers WILD Casino, T‑321/19, not published, EU:T:2020:101, paragraph 16 and the case-law cited).

130    In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (see judgment of 12 March 2020, Jokers WILD Casino, T‑321/19, not published, EU:T:2020:101, paragraph 17 and the case-law cited).

131    Lastly, the obligation to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 26 September 2017, La Rocca v EUIPO (Take your time Pay After), T‑755/16, not published, EU:T:2017:663, paragraph 42 and the case-law cited).

132    In the present case, first, as is apparent from paragraphs 64 to 69 of the contested decision and from paragraphs 116 to 123 above, the Board of Appeal, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, set out in a clear and unequivocal manner the reasons why, notwithstanding the phonetic similarity between the signs at issue, a likelihood of confusion could, in the present case, be ruled out with regard to all of the goods at issue.

133    Secondly, as has been pointed out in paragraphs 128 and 129 above, in stating the reasons for the decisions which they are called on to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision. The obligation to state reasons has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision.

134    It must be noted that the Board of Appeal’s statement of reasons in the contested decision enabled the applicant to understand the contested decision and to bring an action disputing its merits and then enabled the Court to exercise its power of review. Furthermore, as regards the absence of any reference to the reasons why the Board of Appeal, according to the applicant, did not follow EUIPO’s previous practice, it is sufficient to point out that the contested decision, which, as has previously been stated, sets out the facts and the legal considerations having decisive importance, does not state that it departed from EUIPO’s previous practice and that that is not therefore a ground for the contested decision. As regards the grounds why some of the goods at issue were not among the goods commonly ordered orally, it is sufficient to point out that those grounds were, in any event, set out in paragraph 66 of the contested decision.

135    Furthermore, it must be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous administrative practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

136    EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which those principles are applied must be consistent with respect for the principle of legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 and 75).

137    It must therefore be pointed out that, although it is true that the two decisions to which the applicant refers, namely the decision of the Fourth Board of Appeal of 22 April 2009 (Case R 844/2007-4) and the judgment of 13 June 2019, Pet King Brands v EUIPO – Virbac (SUIMOX) (T‑366/18, not published, EU:T:2019:410), related to the assessment of the likelihood of confusion and the importance of the phonetic similarity in the context of that assessment with regard to goods in Class 5, they did not, however, concern signs containing the word element ‘hyal’, as in the present case. The signs at issue in those two cases were, first, AVOSOL and Actosolv with regard to decision R 844/2007-4 and, secondly, SUIMOX and ZYMOX with regard to Case T‑366/18. Consequently, no conclusion can, in any event, be drawn from those decisions for the purposes of the present case.

138    The present plea must therefore be rejected.

139    In view of all of the foregoing considerations, the action must be dismissed in its entirety as unfounded, without it being necessary to examine the intervener’s submissions that all of the pleas are inadmissible because the applicant has not stated clearly how the various alleged infringements would affect the legality of the contested decision.

IV.    Costs

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

141    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. Since the intervener has not applied for costs against the applicant, it must therefore bear its own costs.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Fidia farmaceutici SpA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

3.      Orders Giuliani SpA to bear its own costs.

Delivered in open court in Luxembourg on 2 March 2022.

*      Language of the case: English.

© European Union
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