Judgment — ECLI:EU:T:2015:355
Date: 2015-06-03
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

summary chart’ which the applicant has drawn up by way of illustration and which consists of judgments relating to goods in Class 5 of the Nice Agreement. 124 First, by confining itself to listing examples from the case-law, without even citing the paragraphs of the judgments which correspond to its claims, the applicant does not explain to what extent each of those judgments would be capable of showing that there is no likelihood of confusion in the present case. 125 Secondly, it must be stated that those judgments refer to factual situations that are different from that at issue in the present case and cannot therefore constitute precedents that are sufficient to establish that there is no similarity between the marks at issue in the present joined cases. The judgments referred to by the applicant are characterised by differences between the signs at issue which are capable of affecting the likelihood of confusion, whether they are differences between their first syllable or specific differences in pronunciation created by the addition or removal of certain syllables in one sign as compared with the other (judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraphs 53 to 57; judgment of 8 July 2009 in Laboratorios Del Dr. Esteve v OHIM — Ester C (ESTER-E), T‑230/07, EU:T:2009:252, paragraph 48; judgment of 23 September 2009 in GlaxoSmithkline and Others v OHIM — Serono Genetics Institute (FAMOXIN), T‑493/07, T‑26/08 and T‑27/08, EU:T:2009:355, paragraph 69; judgment of 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, ECR, EU:T:2010:520, paragraph 51; judgment of 7 June 2012 in Meda Pharma v OHIM — Nycomed (ALLERNIL), T‑492/09 and T‑147/10, EU:T:2012:281, paragraph 41; and judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 36). The similarity of the goods 126 The applicant disputes, in the present joined cases, that there is a similarity between the pharmaceutical preparations covered by the earlier mark and the goods ‘that would bear the sign PENSA PHARMA’. 127 The applicant states, first, that specialists and patients are perfectly used to identifying different pharmaceutical products, even those which are for the same therapeutic use and belong to different undertakings, by similar names, which limits any likelihood of confusion. It maintains, secondly, that the marks at issue cover pharmaceutical products with different therapeutic indications, in so far as the goods marketed by the interveners under the earlier mark are prescribed for ulcerative colitis and Crohn’s disease, which has absolutely nothing to do with the products ‘that would bear the sign PENSA PHARMA’. It relies in that regard on a series of judgments of the General Court which excludes any likelihood of confusion between medicinal products where the therapeutic indications are different. Thirdly, it submits that the target public for the goods at issue is different and that that public is perfectly capable of distinguishing between the goods covered by the marks at issue. Fourthly, it submits that the level of attention of the public at which the pharmaceutical products are aimed is higher than for other goods. 128 As far as the applicant’s arguments in respect of the different therapeutic indications and the particularities of the goods at issue are concerned, it is, as the Board of Appeal pointed out, apparent from the case-law that the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate to the description of the goods covered by the earlier mark and not to the goods for which the trade mark is actually used unless, following a request for proof of genuine use of the earlier mark, such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (see, by analogy, judgment of 13 December 2012 in Natura Selection v OHIM — Ménard (natura), T‑461/11, EU:T:2012:693, paragraph 31 and the case-law cited). 129 It must be stated in that regard that the applicant never officially requested proof of genuine use in accordance with Article 57(2) and (3) of Regulation No 207/2009. 130 Furthermore, it must be borne in mind that the comparison of the goods must not relate to the goods in respect of which the proprietor of the contested mark envisages using that mark; an analysis of whether there will be a likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, by analogy, judgment of 15 March 2007 in T.I.M.E. ART v OHIM, C‑171/06 P, EU:C:2007:171, paragraph 59, and judgment of 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 63). Consequently, the use which the applicant intends to make of the mark applied for is irrelevant. OHIM may only take account of the list of goods applied for as it appears in the trade mark application concerned, subject to any amendments thereto (see, by analogy, judgment of 13 April 2005 in Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, EU:T:2005:126, paragraph 33; see also, to that effect, judgment of 22 March 2007 in Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, ECR, EU:T:2007:96, paragraph 89, and judgment of 1 July 2009 in Perfetti Van Melle v OHIM — Cloetta Fazer (CENTER SHOCK), T‑16/08, EU:T:2009:240, paragraph 34). Consequently, if the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (judgment in natura, cited in paragraph 128 above, EU:T:2012:693, paragraph 33 and the case-law cited). 131 In the light of the foregoing, OHIM was justified in finding that the ‘pharmaceutical preparations’ in Class 5 which were covered by the marks at issue were identical. 132 In those circumstances, all the judgments referred to by the applicant, inasmuch as they deal with the principle of genuine use of the mark, are irrelevant. In the same way, as OHIM submits, the applicant’s arguments relating to the different therapeutic indications of the medicinal products for which it intends to use its mark, the different active substances in them, the different target public for them and the higher level of attention of the relevant consumers are irrelevant. 133 As regards the other goods (sanitary preparations for medical purposes, dietetic substances adapted for medical use, plasters, materials for dressings, disinfectants) with regard to which the mark is contested, as resulting from the restriction which took place on 1 December 2009 (see paragraph 13), it must be noted that the applicant has not provided any specific arguments tending to show that there is no similarity between them and the ‘pharmaceutical preparations’ covered by the registration of the earlier mark. The Board of Appeal’s findings as to the similarity of the goods covered by the marks at issue must therefore be upheld. 134 The Court has already held that the other goods in Class 5 covered by the contested mark may be regarded as similar or identical to the ‘pharmaceutical preparations’ covered by the earlier mark. This is true: – of sanitary preparations for medical purposes (judgment of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, paragraphs 29 to 31, and judgment of 15 March 2012 in Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, EU:T:2012:124, paragraph 44); – and of dietetic substances adapted for medical use (judgment in TRUBION, cited in paragraph 116 above, EU:T:2009:507, paragraph 32). 135 The same is true of materials for dressings, plasters and disinfectants which have a strong complementary connection with pharmaceutical preparations in the sense that those goods have the same purpose or intended use (medical care), are aimed at the same consumers (end consumers and professionals in the health sector) and use the same distribution channels. 136 Lastly, the medical services and consultancy in the field of pharmacy in Class 44 are complementary to the pharmaceutical preparations in Class 5 (judgment of 2 June 2010 in Procaps v OHIM — Biofarma (PROCAPS), T‑35/09, EU:T:2010:220, paragraphs 43 to 45). They are therefore linked to those goods by a certain degree of similarity. In that regard, it must be held that the applicant does not dispute that the services in Class 44 covered by its application for registration are similar to the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark as it has not put forward any arguments relating to that issue. 137 In those circumstances, the Board of Appeal’s analysis in the contested decisions must be confirmed inasmuch as it found that the goods and services at issue were identical or similar. The likelihood of confusion 138 The applicant submits, in the first place, that neither the nature of the goods and their particularities nor the high level of attention of ‘patients’ and professionals in choosing the goods at issue were sufficiently taken into account in the contested decisions. It submits, in the second place, that the choice of an earlier French right for the decision in Case R 1884/2011-5 and of an earlier Benelux right in the decision in Case R 1883/2011-5, instead of the earlier Spanish or Italian rights, inter alia, is arbitrary. It claims, in the third place, that the element ‘pharma’ in the mark PENSA PHARMA should have been taken into account in the comparison of the signs carried out in the latter decision. It observes, in the fourth place, that the fact that the business name of the proprietor of the contested marks is on the whole the same as the word element in those marks, namely the element ‘pensa pharma’ or the element ‘pensa’, should have been taken into account in those decisions and that, even if the action is dismissed, the goods manufactured by that proprietor will, in any event, include the words ‘Pensa Pharma’ in the explanatory leaflet in respect of the goods marketed under those marks. 139 It must be borne in mind that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment in MATRATZEN, cited in paragraph 62 above, EU:T:2002:261, paragraph 45). The likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see paragraph 61 above). That global assessment thus 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 (see paragraph 62 above). 140 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 18). 141 Lastly, it is possible that mere aural similarity between trade marks may create a likelihood of confusion (judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 60 above, EU:C:1999:323, paragraph 28). 142 In the present case, it has been held that: – the goods and services covered by the marks at issue are identical or similar (see paragraph 137 above); – the signs covered by the marks at issue are visually similar, albeit to a low degree (see paragraph 122 above); – the signs covered by the marks at issue are phonetically similar (see paragraph 122 above); – conceptually, neither the contested marks nor the mark PENTASA have any clear meaning for the relevant public (see paragraph 122 above). 143 Lastly, it must be pointed out that the Board of Appeal found, in paragraph 34 of the decision in Case R 1883/2011-5 and in paragraph 39 of the decision in Case R 1884/2011-5 that the earlier mark PENTASA had acquired a highly distinctive character through use in the Benelux countries as well as in France. 144 The applicant submits in that regard, first, ‘that none of the previous decision considered that [the mark PENTASA] had a reputation, but merely that it was used’ and, secondly, that, although a trademark may become highly distinctive through use in a given territory, that does not automatically contribute to the creation of a likelihood of confusion in that territory. It relies in that regard on the judgment in OFTAL CUSI, cited in paragraph 86 above, (EU:T:2011:379). 145 However, it must be stated, first, that, in the contested decisions, the Board of Appeal did indeed find that the earlier mark has acquired a ‘highly’ distinctive character or ‘enhanced’ distinctiveness through use (paragraph 34 of the decision in Case R 1883/2011-5 and paragraph 39 of the decision in Case R 1884/2011-5), and, secondly, that it is not apparent from the judgment in OFTAL CUSI, cited in paragraph 86 above, (EU:T:2011:379), by contrast with the present case, that the Board of Appeal found that the earlier mark had acquired enhanced distinctiveness through use (judgment in OFTAL CUSI, paragraphs 28 and 52). 146 The arguments put forward by the applicant do not therefore make it possible to invalidate the Board of Appeal’s finding that the earlier mark has acquired a highly distinctive character through use, both in French territory and in the territory of the Benelux countries. 147 It follows that, considered cumulatively, the degree of similarity between the signs at issue and the degree of similarity between the goods and services covered by those signs are sufficiently high to hold that there is a likelihood of confusion (judgment in MATRATZEN, cited in paragraph 62 above, EU:T:2002:261, paragraph 45). 148 Accordingly, the low degree of visual similarity between the signs at issue is offset by the identity or similarity of the goods or services which they cover and the highly distinctive character of the earlier trade mark (judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 18). 149 In those circumstances, the Board of Appeal was right to find, in paragraph 34 of the decision in Case R 1883/2011-5 and paragraph 40 of the decision in Case R 1884/2011-5, that there was a likelihood of confusion between the marks at issue. 150 The existence of a likelihood of confusion is not invalidated by the arguments put forward by the applicant. 151 First, as has been stated in paragraphs 128 to 130 above, the applicant’s arguments in respect of the different therapeutic indications and the particularities of the goods covered by the marks at issue are irrelevant, inasmuch as the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate, unless there is a request for proof of genuine use, to the description of the goods covered by the marks at issue and not to the goods in respect of which those marks are actually used or, a fortiori, in respect of which the use is envisaged. 152 Secondly, according to the case-law, even if the relevant public consists of persons whose level of attention may be considered to be high, as the Board of Appeal found in the present case, that is not sufficient, given the similarity between the goods and the signs at issue, to exclude the possibility that that public might believe that those goods come from the same undertaking or, as the case may be, from economically-linked undertakings (judgment of 17 October 2006 in Armour Pharmaceutical v OHIM — Teva Pharmaceutical Industries (GALZIN), T‑483/04, ECR, EU:T:2006:323, paragraph 80). That is particularly so if the earlier mark is highly distinctive. In addition, it should be borne in mind that the fact that that public will pay more attention to the identity of the producer or supplier of the product or service which it wishes to purchase does not, however, mean that it will examine the mark before it down to the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see judgment in FEMIVIA, cited in paragraph 75 above, EU:T:2014:672, paragraph 48 and the case-law cited). 153 Thirdly, as has been stated in paragraph 42 above, the Board of Appeal was justified in basing its examination of the likelihood of confusion on the earlier marks registered in the Benelux countries and France, and not on the marks registered in Spain and Italy. 154 Fourthly, contrary to what the applicant submits in Case T‑544/12 in each of its arguments in respect of the visual, phonetic and conceptual similarity and also at the stage of the analysis of the likelihood of confusion, the addition of the element ‘pharma’ to the element ‘pensa’ in the sign PENSA PHARMA does not affect the finding that there is a likelihood of confusion between the marks at issue, even if, visually and phonetically, that addition is capable of adding an element of differentiation. 155 The element ‘pharma’ in the sign PENSA PHARMA will be perceived by the relevant public in the Benelux countries as being descriptive and devoid of any distinctive character and therefore as being non-dominant, inasmuch as it is, in essence, an abbreviation of the word ‘pharmaceutical’, which is a very well-known term designating companies that belong to the pharmaceutical industry (judgment of 17 June 2009 in Korsch v OHIM (PharmaResearch), T‑464/07, EU:T:2009:207, paragraph 33). 156 The term ‘pharma’ in the sign PENSA PHARMA does not therefore contribute to the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (judgment of 18 June 2002 in Philips, C‑299/99, ECR, EU:C:2002:377, paragraph 30, and judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 27). 157 In those circumstances, the term ‘pharma’ in the sign PENSA PHARMA cannot be capable of making on consumers or health professionals a particular impression which they will remember and which is capable of differentiating the goods and services with which that term is associated from the goods covered by the earlier mark. In that regard, it should be pointed out, in the context of the global assessment of the likelihood of confusion, that, because the average consumer retains only an imperfect image of the mark, the predominant element of the mark in question is of major importance (judgment of 8 March 2005 in Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, EU:T:2005:82, paragraph 40). 158 The addition of the term ‘pharma’ to the term ‘pensa’ in the sign PENSA PHARMA for which the contested mark in Case T‑544/12 was registered is not therefore capable of affecting the likelihood of confusion between that mark and the earlier mark PENTASA. 159 Fifthly, as regards the fact that the business name of the proprietor of the contested marks is on the whole the same as the word element in those marks and that therefore, even if the action is dismissed, the goods manufactured by that proprietor will include the words ‘Pensa Pharma’ in the ‘compulsory details’ in respect of the goods marketed under those marks, it must be pointed out, first, that it is not for the Court to draw inferences from the possible continued existence of the same marks, after a decision declaring them invalid, through their reproduction as a business name. In accordance with the scope of the dispute set out in the application, the Court’s examination must be limited to examining whether there is a likelihood of confusion between the marks at issue as registered. 160 Secondly, it must be stated that the applicant does not in any way explain to what extent the presence of the words ‘pensa’ and ‘pharma’ as a business name in the ‘compulsory details’ in respect of the goods which it markets under the contested marks would decrease the likelihood of confusion between the marks at issue and, in particular, the likelihood that the goods sold under the earlier mark PENTASA would be confused with the goods sold under the mark PENSA PHARMA. 161 In those circumstances, the second plea must be rejected as unfounded and, consequently, the actions must be dismissed in their entirety. Costs 162 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the interveners. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the actions; 2. Orders Pensa Pharma, SA, to pay the costs. Martins Ribeiro Gervasoni Madise Delivered in open court in Luxembourg on 3 June 2015. [Signatures] Table of contents Background to the dispute Forms of order sought Law Admissibility The documents submitted for the first time before the General Court The arguments put forward for the first time at the hearing Substance The first plea, alleging infringement of Article 53(3) of Regulation No 207/2009 The alleged peaceful coexistence in Spain and Italy The withdrawal of the oppositions The coexistence agreement The second plea, alleging infringement of Articles 8(1)(b) and 53(1)(a) of Regulation No 207/2009 The relevant public The similarity of the signs – The visual similarity – The phonetic similarity – The conceptual similarity The similarity of the goods The likelihood of confusion Costs * Language of the case: English.