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

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

3 May 2023 (*)

(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark BIOLARK – Earlier national word mark BIOPLAK – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)

In Case T‑459/22,

Laboratorios Ern, SA, established in Barcelona (Spain), represented by S. Correa Rodríguez, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Klee and A. Ringelhann, acting as Agents,

defendant,

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

Biolark, Inc., established in San Diego, California (United States),

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov (Rapporteur), President, G. De Baere and K. Kecsmár, Judges,

Registrar: T. Henze, Acting Registrar,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Laboratorios Ern, SA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 April 2022 (Case R 1234/2021-5) (‘the contested decision’).

 Background to the dispute

2        On 28 February 2019, EUIPO received notification of the international registration designating the European Union bearing number 1 453 505 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). The mark which was the subject of that international registration, dated 6 January 2019, is the following figurative sign:

3        The mark applied for covered the goods falling, following the limitation made during the proceedings before EUIPO, within Class 10 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, in particular, to the following description: ‘Infusion sets; medical apparatus, namely, infusion and injection devices for administering drugs; diabetic diagnostic medical devices; medical diagnostic apparatus for testing blood sugar levels; needles for medical use; probes for medical purposes; surgical devices and instruments for positioning subcutaneous drug delivery tubes and sensors; excluding products for the prevention of the formation of thrombi and for reducing the risk of obstruction of the arteries.’

4        On 28 June 2019, the applicant filed a notice of opposition to the registration of the mark applied for on the basis of the earlier Spanish word mark BIOPLAK, covering goods falling within Class 5 and corresponding to the following description: ‘Pharmaceutical products’.

5        The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation 2017/1001.

6        Following a request made by Biolark, Inc., EUIPO invited the applicant to furnish proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the period prescribed.

7        On 20 May 2021, the Opposition Division rejected the opposition.

8        On 19 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no likelihood of confusion.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        annul the decision of the Opposition Division of 20 May 2021;

–        refuse protection in the European Union of the international registration at issue for all the goods it covers;

–        order EUIPO to pay the costs.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs incurred by it in the event that the parties are called to a hearing.

12      In its letter of 21 December 2022, EUIPO requests the Court to declare that there is no longer any need to adjudicate.

13      In its observations of 5 January 2023, the applicant claims that the Court should refuse the application for a declaration that there is no need to adjudicate.

 The application for a declaration that there is no need to adjudicate

14      By letter lodged at the Court Registry on 21 December 2022, EUIPO informed the Court that the international registration which was the subject of the application for the grant of the protection of the EU trade mark system, relating to the mark applied for, had not been renewed. Consequently, according to EUIPO, the present action has become devoid of purpose.

15      In its observations of 5 January 2023, the applicant opposed the application for a declaration that there is no need to adjudicate, arguing that the removal of the mark applied for from the European Union trade mark register was due to its cancellation by the United States Patent and Trademark Office (USPTO), for reasons other than those alleged in the present action. In that regard, it added that, if the Court finds that there is no need to adjudicate, the contested decision, which has not been revoked, will become final, which will enable the other party to the proceedings before EUIPO to rely on that precedent if it wishes, in the future, to register a mark BIOLARK with EUIPO.

16      In that regard, it is appropriate to recall that the purpose of the proceedings must continue to exist, like the interest in bringing proceedings, until the final decision, failing which there will be no need to adjudicate; this presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see judgment of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraph 42 and the case-law cited).

17      In the present case, by the contested decision, the Board of Appeal confirmed the decision of the Opposition Division of 20 May 2021 according to which the applicant’s opposition had been rejected, it being specified that the application for registration had been filed on 28 February 2019 with effect from 6 January 2019.

18      It is, moreover, common ground that the international registration was not renewed as from 24 November 2022.

19      In its application for a declaration that there is no need to adjudicate, EUIPO merely states that the action has become devoid of purpose on account of the non-renewal of the international registration at issue, without, however, demonstrating, or even arguing, that that non-renewal has ex tunc effect. Nor does EUIPO provide any evidence to support the conclusion that, as a result of that non-renewal, the application for protection of that mark in the territory of the European Union for the period prior to that non-renewal was withdrawn or is no longer valid.

20      Therefore, given that the application for registration was filed with effect from 6 January 2019, that the non-renewal of the mark applied for did not take place until 24 November 2022 and that there is nothing to suggest that that non-renewal would have ex tunc effects, the contested decision, if it becomes final, would have the effect of rejecting the applicant’s opposition and thus removing the obstacle to registration of the mark applied for for the period claimed, until its expiry. The mark applied for would thus be regarded as eligible for registration between the date claimed, namely 6 January 2019, and the date of its expiry, namely 24 November 2022.

21      Accordingly, even if the international registration at issue has expired as a result of its non-renewal, it cannot be concluded that the present action has become devoid of purpose. It is only as of the date of non-renewal of the international registration at issue that the latter no longer has the effects provided for by Regulation 2017/1001 and not in respect of the earlier period with regard to which the contested decision was adopted (see, by analogy, judgment of 15 March 2012, Cadila Healthcare v OHIM – Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 22 and the case-law cited).

22      Therefore, the lapse of the international registration at issue, which occurred after the appeal was lodged, did not deprive the contested decision of its object or its effects, and the decision was not revoked (see, by analogy, order of 8 May 2013, Cadila Healthcare v OHIM, C‑268/12 P, not published, EU:C:2013:296, paragraph 33).

23      Accordingly, the application for a declaration that there is no need to adjudicate must be refused.

 Substance

24      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It disputes the Board of Appeal’s findings concerning, first, the comparison of the goods covered by the marks at issue, second, the comparison of the marks at issue and, third, the global assessment of the likelihood of confusion.

25      According to Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to 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.

26      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).

27      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).

28      In the present case, the applicant does not dispute the definition of the relevant public adopted by the Board of Appeal in paragraph 45 of the contested decision, according to which that public consists of health professionals and the public at large, each with a high degree of attention. Nor does it dispute that the relevant territory is that of Spain, as the Board of Appeal noted in paragraph 46 of the contested decision.

 The comparison of the goods

29      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, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

30      In the present case, it must be noted that the earlier trade mark was registered for ‘pharmaceutical products’ within Class 5. The parties do not dispute that proof of genuine use of the earlier mark was adduced by the applicant only in respect of a subcategory of those goods corresponding to ‘pharmaceutical products, namely platelet antiaggregant, in particular for the prevention of the formation of thrombi and for reducing the risk of obstruction of the arteries’.

31      Thus, for the purposes of assessing the similarity of the goods, the Board of Appeal took into account, on the one hand, the ‘pharmaceutical products, namely platelet antiaggregant, in particular for the prevention of the formation of thrombi and for reducing the risk of obstruction of the arteries’ falling within Class 5 and covered by the earlier mark, and, on the other hand, the goods falling within Class 10 and covered by the mark applied for referred to in paragraph 3 above.

32      In paragraphs 47 to 56 of the contested decision, the Board of Appeal found that the goods at issue could coincide in their distribution channels and that they were all intended to safeguard human health. It also observed that some of the goods covered by the mark applied for could be used to administer the goods covered by the earlier mark. However, it indicated that this last circumstance was not sufficient to consider that those goods might have the same commercial origin. In addition, the Board of Appeal pointed out that the similarity between the goods at issue rested on very general notions and that, therefore, they were ‘at most similar to a low degree’. With regard more specifically to the ‘diabetic diagnostic medical devices; medical diagnostic apparatus for testing blood sugar levels’, falling within Class 10 and covered by the mark applied for, the Board of Appeal added that there was even less of a relevant degree of similarity with the goods covered by the earlier mark, since, in essence, the former goods were intended for the treatment of diabetes, whereas the latter were intended for the treatment of thrombosis or obstruction of the arteries, meaning that those goods were intended for different categories of patients.

33      The applicant disputes that finding and considers that, although the goods covered by the mark applied for exclude ‘products for the prevention of the formation of thrombi and for reducing the risk of obstruction of the arteries’, there is a ‘close connection’ between the goods at issue since their users are the same and they share the same distribution channels. Furthermore, they are complementary. Therefore, the goods at issue are ‘highly similar’. The applicant adds, referring to the newsletters of the Instituto para el Uso Seguro de los Medicamentos (ISMP; Spanish Office of the Institute for Safe Medication Practices, Spain), that it is necessary to be particularly strict when comparing pharmaceutical products, since confusion on the part of the relevant public in that field could have a negative impact on consumer health.

34      EUIPO disputes the applicant’s arguments.

35      In that regard, as the Board of Appeal noted, without this being disputed by the applicant, it must be pointed out that the goods at issue have the same purpose or intended use, namely the treatment of human health problems, are aimed, in general, at the same consumers, health professionals and the public at large, and may use the same distribution channels, such as pharmacies and hospitals. In addition, as the Board of Appeal found in paragraph 52 of the contested decision, some of the goods covered by the mark applied for, namely ‘infusion sets’, may be used to administer the goods covered by the earlier mark.

36      However, as the Board of Appeal emphasised in paragraph 50 of the contested decision, the similarities between the goods at issue result from their common purpose, namely to preserve or stimulate human health. That general category includes a variety of products. Moreover, the nature of the goods at issue is different, since the goods covered by the mark applied for are various medical devices and instruments, whereas those covered by the earlier mark are pharmaceutical products. In that regard, complementarity presupposes the existence of a close connection between the goods at issue in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57). As the Board of Appeal noted, it is not well known that an undertaking which produces devices allowing for the administration of pharmaceutical products also produces the said pharmaceutical products. Therefore, the complementarity of the goods at issue is not established.

37      Furthermore, it is particularly relevant to note that, in the case at hand, the description of the goods covered by the mark applied for expressly excludes goods intended to prevent the formation of thrombi and reduce the risk of artery obstruction. The goods covered by the earlier mark for which genuine use has been demonstrated specifically have that therapeutic indication. That circumstance thus creates a significant difference between the goods covered by the marks at issue.

38      In addition, it should be pointed out, as the Board of Appeal did, that the ‘diabetic diagnostic medical devices; medical diagnostic apparatus for testing blood sugar levels’ falling within Class 10 and covered by the mark applied for are not used by the same category of patients as the goods falling within Class 5 covered by the earlier mark, which will be used by persons with blood circulation problems.

39      In the light of all of those considerations, it is without committing an error of assessment that the Board of Appeal concluded, in essence, that there was a low degree of similarity between the goods covered by the marks at issue.

40      That conclusion is not called into question by the previous decisions of EUIPO cited by the applicant. In that regard, it is sufficient to note that the decisions that the Boards of Appeal of EUIPO are required to take, under Regulation 2017/1001, concerning the registration of a sign as an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the said decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

41      Moreover, as regards the applicant’s argument that the assessment of the similarity between pharmaceutical preparations must be particularly strict because of the health risks that confusion would entail for the relevant public, as evidenced by the ISMP’s recommendations, it should be noted that it is specifically because of those risks that the level of attention of the relevant public is considered to be high for that category of goods. Therefore, that factor will be taken into account in the examination of the likelihood of confusion.

 The comparison of the signs

42      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

 Distinctive and dominant elements

43      First, the applicant submits that the Board of Appeal made an error of assessment in finding that the group of letters ‘plak’ in the earlier mark would be associated by the relevant public with the Spanish words ‘plaquetario’ or ‘plaqueta’ (platelets or blood cells), when the term ‘plak’ does not exist as such in Spanish and is not commonly known or used in that sense in the medical or pharmaceutical sector. Second, it submits that, within the mark applied for, the word element ‘biolark’ dominates, by itself, the overall impression of that mark, such that its figurative elements are negligible.

44      EUIPO disputes those arguments.

45      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

46      For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

47      In the case at hand, it is worth noting that the earlier mark is a word mark composed of a single word, namely ‘bioplak’. The mark applied for is a figurative mark consisting of the word element ‘biolark’, represented in standard grey capital letters, with the exception of the letter ‘o’, which is represented in the form of a black circle with a white silhouette of a flying bird inside.

48      First, in paragraphs 60 and 61 of the contested decision, the Board of Appeal found that the first syllable ‘bio’ of the earlier mark would be widely understood as referring to ‘biological’ or ‘organic’ products, would be associated with life and living things, and that, therefore, that element had little or no distinctive character. In paragraphs 62 to 65 of the contested decision, it added that consumers of the goods covered by the earlier mark would know that they are taking a medicine for blood platelets and that, therefore, the group of letters ‘plak’ in the earlier mark could be understood as an abbreviation of the Spanish words ‘plaquetario’ or ‘plaquetas’ (platelets or blood cells). It did not, however, rule out the possibility that part of the relevant public might not associate the group of letters ‘plak’ with that meaning, since such a word does not exist as such in Spanish.

49      Second, the Board of Appeal found that the element ‘lark’ of the earlier mark was the English name for a popular small songbird, but that this would not be understood by a substantial part of the relevant public. The Board of Appeal also found that the figurative elements of the mark applied for, given their visual significance, added ‘further distance’ between the marks at issue.

50      Thus, it follows from the contested decision that the Board of Appeal did not identify a dominant element within the marks at issue and considered their common element ‘bio’ to be of little or no distinctiveness.

51      In that regard, first, it is not disputed that a part of the relevant public will break down the terms ‘bioplak’ constituting the earlier mark and ‘biolark’ appearing in the mark applied for into (i) the prefix ‘bio’, which is very widely used in trade and is immediately recognisable, and (ii) the suffix ‘plak’ as regards the earlier mark and ‘lark’ as regards the mark applied for. Nor is it disputed that the prefix ‘bio’, common to both of the marks at issue, will be understood as referring to the concept of ‘biological’ or ‘organic’ goods, and that it has little or no distinctive character for the goods at issue (see judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 63 and the case-law cited).

52      Second, as regards the suffix ‘plak’ in the earlier mark, as noted by the Board of Appeal, it cannot be ruled out that a part of the relevant public will understand it as an abbreviation of the Spanish words ‘plaquetario’ or ‘plaquetas’ (platelets or blood cells). However, since the word ‘plak’ does not exist as such in Spanish and is therefore a fanciful group of letters, and since the existence and use of that group of letters in the medical field has not been demonstrated, the fact remains that the semantic link between that suffix and the Spanish words ‘plaquetario’ or ‘plaquetas’ and, therefore, the goods concerned can be established only by passing through several stages of reasoning, with the result that that link is neither direct nor specific (see, to that effect and by analogy, judgment of 27 January 2021, Olimp Laboratories v EUIPO – OmniVision (Hydrovision), T‑817/19, not published, EU:T:2021:41, paragraph 59).

53      Nor, as the Board of Appeal noted, is it excluded that a part of the relevant public will not associate the suffix ‘plak’ with the abovementioned Spanish words.

54      Accordingly, in both cases, the distinctive character of the suffix ‘plak’ of the earlier mark must be regarded as normal.

55      Third, in respect of the mark applied for, as has been recalled in paragraph 51 above, the prefix ‘bio’ of its word element must be regarded as having little or no distinctive character. Furthermore, it should also be pointed out, as the Board of Appeal did, that the element ‘lark’ of the mark applied for, although it is an English word designating a popular small songbird, will not be understood by the relevant public, such that its distinctive character must be regarded as normal. That consideration is not disputed by the parties.

56      In terms of the figurative element of the mark applied for, as the Board of Appeal indicated in paragraph 73 of the contested decision, in principle, figurative elements included in signs have a lesser impact in their overall impression than their verbal elements, because the public tends to take in and remember the marks by their verbal elements rather than by describing their figurative components (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). Nevertheless, in the case at hand, the figurative element of the mark applied for representing the white silhouette of a flying bird on a black background, owing to its central position, which makes it prominent within the mark applied for, and colour contrast, will not go unnoticed by the relevant public. Therefore, contrary to what the applicant claims, while it is true that that element is not dominant within the mark applied for, it cannot be regarded as negligible, either.

57      Accordingly, it must be concluded that, contrary to what the applicant claims, no dominant element emerges from the marks at issue and that the prefix ‘bio’, common to those marks, has little or no distinctive character, whereas the suffixes ‘plak’ of the earlier mark and ‘lark’ of the mark applied for have a normal distinctive character. Moreover, the figurative element of the mark applied for representing the white silhouette of a flying bird is not negligible.

 Visual similarity

58      In paragraphs 72 to 74 of the contested decision, the Board of Appeal concluded that there was a low degree of visual similarity between the marks at issue, finding that they coincided in the presence of the letters ‘b’, ‘i’ and ‘o’, which appeared in the same order at the beginning of those marks, and in the letters ‘l’, ‘a’ and ‘k’, which were not, however, placed in the same order. It also stated that the marks at issue differed in the letters ‘p’ of the earlier mark and ‘r’ of the mark applied for and in the figurative element and stylisation of that mark.

59      The applicant disputes that finding, arguing that the relevant public will not disregard the common prefix ‘bio’ at the beginning of the signs, that the marks at issue are of the same length, that they share five out of seven letters, placed in an identical order, and that they differ only slightly in their last respective syllable. Therefore, according to the applicant, the marks have a strong visual similarity.

60      EUIPO disputes the applicant’s arguments.

61      First, as the applicant notes, the word element ‘biolark’ of the mark applied for and the term ‘bioplak’ composing the earlier mark have the prefix ‘bio’ in common. However, while it is true, as the applicant points out, that the first part of a mark tends to have a greater visual impact than the final part, so that the consumer, in general, pays greater attention to the first part of a mark than to the end, such a consideration cannot be valid in all cases (see judgment of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 51 and the case-law cited).

62      In the present case, it is important to state that the weak degree of distinctiveness of the element ‘bio’ with regard to the goods at issue, noted in paragraph 57 above, considerably lessens the similarity arising from that sequence of letters in common, even though the relative importance of that prefix must, however, be taken into account when comparing the signs at issue (see judgment of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 48 and the case-law cited).

63      On account of that weak distinctive character, the attention of the relevant public will be directed at the suffixes ‘plak’ and ‘lark’ of the marks at issue, which constitute their distinctive elements, rather than at the common prefix ‘bio’.

64      Second, so far as concerns the visual comparison of the suffixes ‘plak’ of the earlier mark and ‘lark’ of the mark applied for, while they do share the letters ‘l’, ‘a’ and ‘k’, these are not placed in the same order within those marks, as the Board of Appeal correctly noted. Only the letter ‘k’ has the same position in both marks, whereas the other letters are situated in different places within the marks at issue.

65      Furthermore, the mere fact that the marks at issue are composed of the same number of letters, some of which coincide, is not decisive. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraphs 81 and 82).

66      Third, as has been noted in paragraph 56 above, the mark applied for also includes a figurative element representing a black circle with the white silhouette of a flying bird inside, which will not go unnoticed by the relevant public. That element therefore differentiates the marks at issue on the visual level.

67      Consequently, while it is true that the marks at issue have in common the prefix ‘bio’, contrary to what the applicant argues, that prefix cannot give rise to a strong visual similarity between them owing to its weakly distinctive or non-distinctive character. On the contrary, the suffixes ‘plak’ and ‘lark’ of the marks at issue, on which the attention of the relevant public will be focused, are dissimilar overall, the difference between the marks at issue being accentuated by the figurative elements of the mark applied for.

68      In the light of those considerations, it is without making an error of assessment that the Board of Appeal concluded that there was a low degree of visual similarity between the marks at issue.

 Phonetic similarity

69      In paragraphs 75 and 76 of the contested decision, the Board of Appeal concluded that there was a low degree of phonetic similarity between the marks at issue. In that regard, it stated that the marks at issue coincided in the pronunciation of their common first syllable ‘bio’ but that this had, at most, a low distinctive character. In addition, it observed that, although the second syllables of each of the marks at issue shared some sounds, they were not in the same order, meaning that the marks at issue differed in their second syllable.

70      The applicant disputes that conclusion, reiterating, in essence, the arguments set out in paragraph 59 above relating to the visual similarities between the marks, taking the view that they have an impact on the phonetic level. Moreover, it argues that the rhythm and intonation in the pronunciation of the marks at issue are highly similar. It adds that they contain the vowel ‘a’ and end with the ‘k’ sound, the latter being very characteristic sonically in Spanish, which gives rise to a strong similarity between the marks at issue.

71      EUIPO disputes the applicant’s line of argument.

72      In that regard, the Court has already held that the relative importance of the prefix ‘bio’ in the phonetic comparison of signs at issue is considerably reduced, as a result of its non-distinctive or weakly distinctive character, but that its presence must nevertheless be taken into account when making that comparison (see judgment of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 54 and the case-law cited).

73      Thus, even though the prefix ‘bio’ will be pronounced in the same way as regards each of the signs at issue, the fact remains that the relevant public, which is familiar with that weakly distinctive or non-distinctive element, will pay more attention to the pronunciation of the next of the terms concerned, namely ‘lark’ and ‘plak’.

74      Even though the syllables ‘lark’ and ‘plak’ share the sounds corresponding to the letters ‘l’, ‘a’ and ‘k’, they are pronounced differently because, overall, the syllables ‘lark’ and ‘plak’ are phonetically different. That difference is further accentuated by the presence of the letter ‘r’ in the mark applied for, usually pronounced strongly in Spanish, and of the ‘p’ sound in the earlier mark.

75      As for the applicant’s claim that the ‘k’ sound has a ‘very characteristic sound in Spanish’, it must be pointed out that that claim is not substantiated.

76      Accordingly, it must be concluded that, contrary to what the applicant claims, it is without committing an error of assessment that the Board of Appeal found that there was a low degree of phonetic similarity between the marks at issue.

 Conceptual similarity

77      First, in paragraph 77 of the contested decision, the Board of Appeal found that the marks at issue were conceptually different, in so far as the earlier mark referred to blood platelets, unlike the mark applied for. Moreover, as the mark applied for conveys the concept of a bird, of a lark in particular, it found that the marks at issue were even further apart conceptually.

78      Second, the Board of Appeal stated, in paragraphs 78 and 79 of the contested decision, that, to the extent that the meaning of the earlier mark would not be understood by the relevant public, the marks at issue had a conceptual similarity restricted to their common element ‘bio’, but that that similarity had only a limited impact given that that element had little or no distinctive character and was therefore not an indication of commercial origin. Accordingly, it concluded that, overall, the reference to ‘biological’ or to concepts closely related thereto was unlikely to create any relevant degree of conceptual similarity between the marks at issue.

79      The applicant disputes the fact that the group of letters ‘plak’ in the earlier mark conveys the concept of platelets or blood cells. It also refers to the case-law to argue that, even though the prefix ‘bio’ in the marks at issue is likely to be understood by the whole of the public as an abbreviation of the words ‘biological’ or ‘biology’, it has only a weak degree of distinctiveness and cannot therefore be given too much weight. As a result, a conceptual comparison is impossible.

80      EUIPO disputes the applicant’s arguments.

81      First, as has been pointed out in paragraph 51 above, on account of its widespread use to designate the goods at issue, the prefix ‘bio’ is regarded as having only little or no distinctive character, with the result that the relevant public will not pay particular attention to that conceptual similarity (see judgment of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 64 and the case-law cited).

82      Second, as has been stated in paragraph 52 above, the suffix ‘plak’ in the earlier mark could be understood, on reflection, by a part of the relevant public as referring to platelets or blood cells, whereas another part of that public will not make such a semantic link.

83      Third, as has been noted in paragraph 55 above, the element ‘lark’ of the mark applied for will not be understood by the relevant public.

84      Fourth, it is not disputed by the applicant that the mark applied for, on account of its figurative element representing the white silhouette of a flying bird, may evoke the concept of a bird.

85      Thus, it has to be concluded that, for the relevant public, the mark applied for will be understood as evoking the concept of something biological and that of a bird. As far as the earlier mark is concerned, it will be understood by a part of the relevant public as evoking the concept of something biological and that of platelets or blood cells. For another part of the relevant public, that mark will be understood only as referring to something biological in nature.

86      It follows that, from a conceptual standpoint, the marks at issue share only an allusion to the biological nature of the goods they cover, which can justify, in the light of the little or no distinctive character of the prefix ‘bio’, only a finding that there is a low degree of conceptual similarity between them.

 Distinctive character of the earlier mark

87      In determining the degree of distinctive character of a mark, an overall assessment must be made of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the trade mark, including whether it does or does not contain an element descriptive of the goods for which it has been registered, as well as other criteria, such as how intensive, geographically widespread and long-standing use of the mark has been (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraphs 55 and 56 and the case-law cited).

88      In paragraphs 81 to 83 of the contested decision, the Board of Appeal stated that, since the applicant had not explicitly claimed that its mark was particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctive character of the earlier mark would rest on its distinctiveness per se. In addition, the Board of Appeal stated that the earlier mark as a whole had no meaning for any of the goods at issue for the relevant public. However, it emphasised that that mark was made up of ‘less distinctive components’ and that, therefore, its distinctive character had to be seen as ‘less than normal’.

89      The applicant, as has been stated in paragraphs 43 and 79 above, disputes the fact that the relevant public could understand the suffix ‘plak’ as referring to blood platelets. Given that that argument also has a bearing on the examination of the inherent distinctiveness of the earlier mark, the following should be noted.

90      As has been found in paragraph 51 above, the prefix ‘bio’ in the earlier mark has little or no distinctive character. By contrast, the suffix ‘plak’ will be perceived by a part of the relevant public as a fanciful element. Furthermore, as has been noted in paragraph 52 above, even for the part of the relevant public that will understand that suffix as referring to platelets or blood cells, that link would be made only after reasoning in several stages. Therefore, in both cases, the suffix ‘plak’ has a normal distinctive character.

91      Accordingly, the inherent distinctive character of the earlier mark must be regarded as average, contrary to what was found by the Board of Appeal in paragraph 83 of the contested decision.

 Overall likelihood of confusion

92      In paragraphs 84 to 94 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion in view of the ‘less than normal’ distinctiveness of the earlier mark, the high level of attention of the relevant public, the low degree of visual and phonetic similarity between the goods at issue and the marks at issue and the fact that the potential similarity on the conceptual level resulting from the common element ‘bio’ was not relevant at the likelihood of confusion stage.

93      The applicant, recalling that, in its view, the marks at issue are ‘visually and aurally highly similar’ and that the goods covered by them are ‘so close[ly] related’, considers that there is a likelihood of confusion. It also emphasises that a low degree of similarity between the goods at issue may be offset by a high degree of similarity between the marks at issue.

94      EUIPO disputes that line of argument.

95      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, 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).

96      Nonetheless, the principle of interdependence is not intended to apply mechanically. Thus, while it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, conversely there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a weak degree of similarity between the marks at issue (see, to that effect, judgment of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraphs 95 and 96 and the case-law cited).

97      At the outset, it should be noted that the applicant’s line of argument is based on incorrect premisses according to which the marks at issue and the goods they cover are similar to a high degree. Those premisses have been rejected in paragraphs 39, 68, 76 and 86 above, however.

98      Moreover, first, as has been noted in paragraph 28 above, the relevant public will display a high level of attention. This factor is particularly important in the present case. According to the case-law, as regards pharmaceutical products which affect consumers’ state of health, consumers are less likely to confuse different versions of those products (see judgment of 21 October 2008, Aventis Pharma v OHIM – Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 29 and the case-law cited).

99      Second, as has been found in paragraph 39 above, the goods at issue are similar to a low degree.

100    Third, in terms of the similarity of the marks at issue, it should be recalled that they have a low degree of visual, phonetic and conceptual similarity.

101    In that regard, it should be stressed that the similarity between the marks at issue created by their prefix ‘bio’ carries very limited weight, if any, in the context of the global assessment of the likelihood of confusion. Owing to the lack of distinctive character of that prefix, it cannot be perceived as an indication of commercial origin. The relevant public’s attention will, as a result, naturally focus more on the elements which differentiate the signs at issue and, in particular, on the suffixes ‘plak’ in the earlier mark and ‘lark’ in the mark applied for and on the figurative elements in that mark (see, by analogy, judgment of 15 October 2020, BIOPLAST BIOPLASTICS FOR A BETTER LIFE, T‑2/20, not published, EU:T:2020:493, paragraph 75).

102    Fourth, as regards the inherent distinctiveness of the earlier mark, as has been noted in paragraph 91 above, it must be regarded as normal. According to settled case-law, however, while 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 (see judgment of 28 January 2014, Progust v OHIM – Sopralex & Vosmarques (IMPERIA), T‑216/11, not published, EU:T:2014:34, paragraph 43 and the case-law cited).

103    Accordingly, in the light of all of those factors, it is without committing an error of assessment that the Board of Appeal concluded that there was no likelihood of confusion.

104    In the light of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second and third heads of claim.

 Costs

105    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.

106    In the case at hand, even though the applicant has been unsuccessful, EUIPO applied for costs against the applicant only in the event that the parties were called to a hearing. Accordingly, the Court having decided to rule without an oral part of the procedure, each party must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Refuses the application for a declaration that there is no need to adjudicate made by the European Union Intellectual Property Office (EUIPO);

2.      Dismisses the action;

3.      Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 3 May 2023.

*      Language of the case: English.

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