JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
19 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark XENASA — Earlier EU word mark PENTASA — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑362/16,
Tillotts Pharma AG, established in Rheinfelden (Switzerland), represented by M. Douglas, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ferring BV, established in Hoofddorp (Netherlands), represented initially by I. Fowler, Solicitor, and D. Slopek, lawyer, and subsequently by I. Fowler,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 April 2016 (Case R 3264/2014-4), relating to opposition proceedings between Ferring and Tillotts Pharma,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 29 June 2016,
having regard to the response of EUIPO lodged at the Court Registry on 6 September 2016,
having regard to the response of the intervener lodged at the Court Registry on 17 October 2016,
having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 23 November and 5 December 2017,
further to the hearing on 21 February 2018,
gives the following
Judgment
Background to the dispute
1        On 21 June 2013, the applicant, Tillotts Pharma AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign XENASA.
3        The goods in respect of which registration was sought are in Class 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, after the restriction made during the proceedings before EUIPO, to the following description: ‘Pharmaceutical preparations, namely for the diagnosis, prevention and/or treatment of gastrointestinal disorders and conditions; pharmaceutical preparations for the treatment of inflammation of the gastrointestinal tract; dietetic substances adapted for medical use, namely for the diagnosis, prevention and/or treatment of gastrointestinal disorders and conditions’.
4        The trade mark application was published in Community Trade Marks Bulletin No 2013/147 of 6 August 2013.
5        On 31 October 2013, the intervener, Ferring BV, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
6        The opposition was based on the earlier EU word mark PENTASA, covering goods in Class 5 corresponding to the following description: ‘pharmaceutical products and substances’.
7        The ground relied on in support of the opposition was that laid down in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        By letter received by EUIPO on 7 April 2014, within the prescribed time limit for filing evidence in support of the opposition, the intervener produced a number of documents in order to substantiate the enhanced distinctiveness that it claimed in respect of the earlier mark.
9        On 5 December 2014, the Opposition Division rejected the opposition.
10      On 23 December 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      By decision of 29 April 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division, upheld the opposition and refused to register the mark applied for. It held, in essence, that the relevant public consists of medical professionals and end-users within the European Union (contested decision, paragraph 15), that some of the goods covered by the marks at issue are identical and the remainder highly similar (contested decision, paragraphs 16 to 19), that there is an average degree of visual and phonetic similarity between the signs at issue (contested decision, paragraphs 21 to 24), that the conceptual comparison is neutral (contested decision, paragraph 25), that the earlier mark has a normal level of inherent distinctiveness and has acquired enhanced distinctiveness through its use in respect of the specific pharmaceutical preparations in respect of which, following the limitation, the contested mark was applied for (paragraphs 31 and 32), and that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue, with regard to the goods covered by the mark applied for, at least from the perspective of patients as end‑users, even taking into account that they would exhibit a higher than average level of attentiveness (contested decision, paragraph 32).
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action for annulment in its entirety;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, which is divided into three parts. The first part relates to the Board of Appeal’s findings regarding the similarity of the signs at issue and the second part concerns the claim that the Board of Appeal’s finding that the earlier mark has acquired enhanced distinctiveness in respect of the goods covered by that mark is incorrect. By the third part, the applicant argues that, contrary to the Board of Appeal’s finding, there is no likelihood of confusion between the marks at issue. In that context, it claims, inter alia, that the Board of Appeal failed to take into account the fact that the relevant public is particularly attentive.
15      EUIPO and the intervener dispute the merits of that plea.
16      In that context, it should be recalled that, in accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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 mark.
17      According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks 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 marks 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).
18      Furthermore, in order for registration of an EU trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 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).
19      Moreover, in order to find that there is a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood exists for the whole of the relevant public. It is sufficient that it exists for a significant part of that public (see, to that effect, judgment of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraphs 119 to 121 and the case-law cited).
The relevant public and its level of attention
20      In paragraph 15 of the contested decision, the Board of Appeal found that the relevant public for the goods at issue consists of the professional public and patients as end-users. The parties do not challenge these findings of the Board of Appeal, which are, moreover, free from error.
21      In paragraph 29 of the contested decision, the Board of Appeal found that the relevant public’s level of attention is high, even for end-users, on account of the medical nature of the goods in question.
22      In that context, EUIPO submits that, having regard to the fact that the goods at issue, namely pharmaceutical and dietetic preparations for the diagnosis, prevention or treatment of gastrointestinal disorders and conditions, constitute rather a broad category, the goods to be taken into consideration are those in respect of which the relevant public will show the lowest degree of attentiveness. Accordingly, it argues, the level of consumer attentiveness is just above average.
23      That argument must be rejected. It is apparent from the case-law that consumers are likely to display a high degree of attention when pharmaceutical products are prescribed (see judgment of 9 April 2014, Ferring v OHIM — Tillotts Pharma (OCTASA), T‑502/12, not published, EU:T:2014:192, paragraph 28 and the case‑law cited) and this also applies to dietetic preparations for the diagnosis, prevention or treatment of gastrointestinal disorders and conditions. Accordingly, contrary to what is argued by EUIPO, it cannot be held that, as regards the goods at issue, the level of consumer attentiveness is just above average.
24      Therefore, the Board of Appeal’s finding that the relevant public’s level of attention is high, even for end-users, must be upheld.
Comparison of the goods
25      In paragraphs 16 to 19 of the contested decision, the Board of Appeal noted that the earlier mark has not been the subject of a request for proof of use in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001) and that the marks at issue therefore have to be compared in the form in which they were registered or applied for. In the first place, it found that the goods in Class 5 ‘pharmaceutical preparations, namely for the diagnosis, prevention and/or treatment of gastrointestinal disorders and conditions; pharmaceutical preparation for the treatment of inflammation of the gastrointestinal tract’ covered by the mark applied for are included in the broader category of ‘pharmaceutical products and substances’, included in the same class, covered by the earlier mark and are therefore identical. In the second place, it found that, having regard to the fact that the goods in Class 5 ‘dietetic substances adapted for medical use, namely for the diagnosis, prevention and/or treatment of gastrointestinal disorders and conditions’ covered by the mark applied for do not fall within the class heading protected by the earlier mark, but within another heading of that class, namely ‘dietetic food and substances adapted for medical or veterinary use, food for babies’, they are not identical, but very similar to the goods covered by the earlier mark. Those findings of the Board of Appeal, which, moreover, the parties do not call in question, must be upheld.
Comparison of the signs
26      As is apparent from settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
27      In paragraphs 20 to 25 of the contested decision, the Board of Appeal compared the signs at issue.
28      In paragraph 22 of the contested decision, first, the Board of Appeal noted that the mark applied for XENASA consists of six letters and the earlier mark PENTASA of seven letters, that those marks have in common five letters placed in the same order, namely the letters ‘E’ and ‘N’, then ‘A’, ‘S’ and ‘A’, but differ in their initial letter, ‘X’ and ‘P’ respectively, and the additional letter ‘T’, appearing in the middle of the earlier mark.
29      Secondly, referring to paragraph 59 of the judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA) (T‑501/12, not published, EU:T:2014:194) and paragraph 61 of the judgment of 9 April 2014, OCTASA (T‑502/12, not published, EU:T:2014:192), the Board of Appeal found that, so far as the end-user is concerned, the descriptive character of the suffix ‘ASA’ as a reference to the active ingredient ‘mesalazine’, also known under the name ‘5-asa’, has not been established.
30      That finding of the Board of Appeal may be upheld only in part.
31      Admittedly, it may be upheld that it has not been established that all end-users of the goods at issue will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’. The end‑users that will not perceive the suffix ‘ASA’ as a reference to the active ingredient must therefore be borne in mind when comparing the signs.
32      However, it cannot be excluded that other end-users of the goods at issue will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’.
33      First, contrary to what is suggested by the Board of Appeal in paragraph 22 of the contested decision, it cannot be inferred either from paragraph 59 of the judgment of 9 April 2014, OCTASA (T‑501/12, not published, EU:T:2014:194) or from paragraph 61 of the judgment of 9 April 2014, OCTASA (T‑502/12, not published, EU:T:2014:192) that none of the end-users of the goods at issue will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’. In those judgments, the Court ruled on two decisions of the Board of Appeal, in which the latter based its conclusion as to the lack of similarity between the signs PENTASA and OCTASA on the finding that, for all users of preparations and substances for preventing and treating diseases and disorders of the gastrointestinal tract, the suffix ‘ASA’ is descriptive, because it enables the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question. In so far as, in those judgments, the Court held that the descriptive character of the suffix ‘ASA’ had not been established for end-users, it thus confined itself to holding that the Board of Appeal’s finding was incorrect. However, it cannot be inferred from those findings that none of the end-users in question will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’.
34      Secondly, it should be recalled that, as is apparent from paragraph 11 of the contested decision, the mark applied for specifically covers, inter alia, pharmaceutical preparations for the treatment of inflammation of the gastrointestinal tract. It cannot be excluded that some end-users suffering from chronic inflammation of the gastrointestinal tract may regularly take medications containing the active ingredient ‘5-asa’ or ‘mesalazine’ and that, accordingly, a significant part of those end-users will perceive the shared suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’.
35      The end-users that will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ must therefore also be borne in mind when comparing the signs.
Visual similarity
36      In paragraph 23 of the contested decision, the Board of Appeal noted that the marks at issue have in common five letters out of their six and seven letters, respectively, and that those five letters are placed in exactly the same order. The marks at issue differ only in their initial consonant, ‘X’ and ‘P’ respectively, and the letter ‘T’ in the middle of the earlier mark. According to the Board of Appeal, the strong similarity of the part following the initial letter gives the marks at issue an average degree of visual similarity, at least so far as the end-user is concerned.
37      The applicant claims that those findings are wrong. First, the Board of Appeal is said to have erred as to the difference arising from the initial letters of the marks at issue. The applicant argues that the initial letters ‘X’ and ‘P’ have nothing in common, that the letter ‘X’ is rather unusual in the languages of the European Union, and that it has a significant impact on the comparison of the signs. It submits that the consumer will have the opportunity and the time to look carefully at the marks at issue and will therefore remember a striking initial letter such as ‘X’. Secondly, the applicant argues that the remaining parts of the marks at issue are not identical but only similar to some degree. It submits that, as the signs are not very long, the fact that the remaining parts share some similarity cannot outweigh the huge difference created by the different beginnings. Thirdly, the applicant argues that regard must be had to the fact that the mark is used only for prescribed medications, which cannot be ordered orally over the counter. It therefore submits that the visual comparison has increased importance. Fourthly, it argues that the signs at issue are different or have only a very low degree of similarity. The first part of a trade mark, it submits, has a greater visual impact than the final part.
38      EUIPO and the intervener dispute those arguments.
39      EUIPO submits that the Board of Appeal was correct to conclude that the degree of visual similarity between the signs at issue is average. First, it argues that the structure of the signs in question is very similar since they both represent a single word element composed of six and seven letters respectively. Secondly, five of those letters are identical and are placed in the same order, which is, in EUIPO’s submission, particularly important when assessing the visual similarity of the signs at issue. Thirdly, EUIPO argues that the difference in the initial letters cannot cancel out the similarity between the signs at issue arising from their common structure and from the five identical letters appearing in the same order. Fourthly, it submits that the additional letter ‘T’ in the earlier mark would not have a noticeable impact on the relevant public’s perception of the mark because it is surrounded by letters that are identical.
40      The intervener submits that the Board of Appeal was fully entitled to find that the signs at issue have an average degree of visual similarity. First, it observes that they are very similar in length and have the letters ‘EN’ and ‘ASA’ in common, those letters being placed in the same order and the same position. Secondly, it argues that as the signs are relatively short, the middle and end of the respective signs are as important as the beginning. It contends that the similarities in the middle section (‘-EN-’) and the identical end section (‘-ASA’) outweigh the difference found at the beginning of the signs at issue. Thirdly, it argues that the applicant has not established that the letter ‘X’ is rather unusual, and that the evidence relied on for this purpose is inadmissible and in any event irrelevant. It observes that that evidence does not contain any information regarding numerous languages spoken in the European Union. It further submits that while the letter ‘X’ may not be very common in some European languages, in the field of pharmaceuticals it is.
41      As a preliminary point, it should be recalled that a distinction must be drawn between the end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ and those who will perceive such a reference (see paragraphs 29 to 35 above).
42      As regards end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, it should be noted that, admittedly, the earlier mark PENTASA and the mark applied for XENASA visually have in common the word elements ‘EN’ and ‘ASA’ in the same order and, therefore, five of their letters. However, it must be stated that the differences at the beginning and in the middle of the signs produce a different overall visual impression. First, the initial letters ‘X’ and ‘P’ in the marks at issue are clearly different. In that context, it must be recalled that those end‑users will notice the difference between the initial first letters more easily as they normally attach more importance to the first part of words (judgment of 13 February 2007, Ontex v OHIM — Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 67). Secondly, the difference arising from the different initial letters is reinforced by the letter ‘T’ in the middle of the earlier mark PENTASA. Accordingly, it must be concluded that, for the end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, the signs at issue will not have an average degree of visual similarity, but a lower than average degree of similarity.
43      For the end-users who will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, the degree of visual similarity between the marks at issue will be low. From the perspective of those end-users, the shared suffix ‘ASA’ will be allusive and will therefore be less capable of identifying the goods at issue as originating from a particular undertaking. For those end-users, the similarity arising from the fact that the marks at issue have in common the word element ‘ASA’ will thus have less importance.
Phonetic similarity
44      In paragraph 24 of the contested decision, the Board of Appeal found that, for the end-user, the marks at issue have an average degree of phonetic similarity. In that regard, the Board of Appeal found that, phonetically, the mark applied for will be pronounced as the three syllables ‘XEN’, ‘A’ and ‘SA’ and that the earlier mark will be pronounced as the three syllables ‘PEN’, ‘TA’ and ‘SA’. According to the Board of Appeal, the marks at issue have in common only their last syllable and are similar in their first two syllables.
45      The applicant maintains that the Board of Appeal’s findings are incorrect. First, it argues that, contrary to the Board of Appeal’s finding, the mark applied for will not be pronounced as the three syllables ‘XEN’ ‘A’ ‘SA’ but as the three syllables ‘XE’ ‘NA’ ‘SA’. In any event, it submits, the Board of Appeal has failed to prove that the mark applied for will be pronounced as the three syllables ‘XEN’ ‘A’ ‘SA’. Secondly, it argues that only the last syllables are phonetically identical. It submits that the first two syllables are strikingly different and render the overall phonetic impression dissimilar. Thirdly, it claims that the beginnings of the words are of utmost importance, in particular with respect to the phonetic comparison. The fact that the last syllables are identical is outweighed by the fact that final syllables are often not articulated clearly or are ‘swallowed’. According to the applicant, the consumer will concentrate of the beginnings of the words, and the letter ‘X’, which it claims is unusual, will have a huge impact, particularly as regards the perception of end-users. Fourthly, the applicant argues that, particularly in relation to end-users, the phonetic comparison is not of high importance because the products sold under the earlier mark are available only on prescription.
46      EUIPO and the intervener dispute those arguments.
47      EUIPO maintains that the Board of Appeal correctly concluded that there is an average degree of phonetic similarity between the signs at issue. It submits that since the earlier mark is an EU trade mark, which must be assessed in respect of all the official languages of the European Union, the fact that the syllabic structure of the signs at issue may vary depending on the pronunciation rules of the various languages cannot be discounted. It contends that a substantial part of the relevant public would pronounce the sign applied for as the three syllables ‘XEN’, ‘A’ and ‘SA’. It also argues that, in any event, the number of syllables of the signs at issue would remain the same regardless of how they were pronounced by the relevant public. Consequently, the fact that the signs under comparison have three syllables each is in itself an important aspect when assessing the phonetic similarity between them. Furthermore, the first two syllables of the signs at issue have some phonetic similarity. The final syllables ‘SA’ of the signs are identical. EUIPO observes that although the first letters of the marks at issue are different and the earlier mark has the additional letter ‘T’, the first two syllables share three letters in common placed in the same order, namely ‘E’, ‘N’ and ‘A’, which would not go unnoticed by the relevant public. It submits that the letter ‘T’ is barely noticeable in the pronunciation of the earlier mark, such that it cannot play a decisive role in the assessment of the overall similarity between the signs. Furthermore, at least part of the relevant public would put an emphasis on the middle letter ‘A’ of both signs, which would further reinforce the phonetic similarity between them.
48      The intervener submits that the Board of Appeal was fully entitled to find that the signs at issue are phonetically similar to an average degree. It argues that the applicant has not demonstrated that the Board of Appeal’s finding as to the pronunciation of the mark applied for is wrong. In any event, it observes, the signs at issue both consist of three syllables and coincide in the sequence of vowels ‘E’ — ‘A’ — ‘A’, as well as in the consonants ‘N’ and ‘S’. It argues that this finding cannot be called into question by claiming that ‘X’ is a rarely used letter. In its view, the fact that a letter is relatively uncommon does not necessarily have any impact on the phonetic comparison. In any event, the letter ‘X’ in the mark applied for XENASA is barely audible. The first syllable of both signs is therefore phonetically dominated by the vowel ‘E’, which renders the beginning of the marks similar.
49      As set out in paragraphs 29 to 35 above, a distinction must be drawn between the end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ and those who will perceive such a reference.
50      For the end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, it should be noted that, admittedly, the signs at issue will be composed of three syllables, the last of which, ‘SA’, is identical, and that the first two syllables have in common three letters placed in the same order, namely the letters ‘E’, ‘N’ and ‘A’.
51      However, even from the perspective of an end-user who will pronounce the mark applied for as the three syllables ‘XEN’, ‘A’ and ‘SA’, as the Board of Appeal envisaged in the contested decision, there will be significant differences between the first two syllables of the signs at issue. The initial letters of the first syllables, namely ‘X’ and ‘P’, are pronounced in clearly different ways. Unlike the letter ‘X’, the letter ‘P’ corresponds to a bilabial sound. In that context, it must be recalled that consumers normally attach more importance to the first part of words (judgment of 23 May 2007, Henkel v OHIM — SERCA (COR), T‑342/05, not published, EU:T:2007:152, paragraph 39). Furthermore, in accordance with the pronunciation envisaged by the Board of Appeal, the second syllable may also be distinguished, since, for the earlier mark PENTASA, it would consist of the consonant ‘T’ and the vowel ‘A’, whereas, for the mark applied for XENASA, it would consist solely of the vowel ‘A’. Therefore, contrary to the Board of Appeal’s finding, even for an end-user who will pronounce the mark applied for as the three syllables ‘XEN’, ‘A’ and ‘SA’, the signs at issue will not have an average degree of phonetic similarity, but a lower than average degree of similarity.
52      For the end-users who will not perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ and will pronounce the mark applied for as the syllables ‘XE’, ‘NA’ and ‘SA’, as envisaged by the applicant, the phonetic similarity will also be lower than average. From the perspective of that part of the relevant public, the similarity of the first syllables ‘PEN’ and ‘XE’ will be reduced and the second syllables will be distinguished by the presence of the consonants ‘T’ and ‘N’.
53      From the perspective of the end-users who will perceive the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, the degree of phonetic similarity between the marks at issue will be low. From their perspective, the shared suffix ‘ASA’ will be allusive and will therefore be less capable of identifying the goods at issue as originating from a particular undertaking. For those end-users, the similarity arising from the fact that the marks at issue have in common the word element ‘ASA’ will thus have less importance.
54      Lastly, with regard to the applicant’s argument that, in respect of the goods at issue, the visual comparison is of greater importance than the phonetic comparison, it should be noted that that argument does not relate to the comparison of the signs as such, but the weight to be given to the visual and phonetic similarities in the global assessment of the likelihood of confusion. Accordingly, this will be taken into account in the global assessment of the likelihood of confusion, in paragraph 66 below.
Conceptual similarity
55      In paragraph 25 of the contested decision, the Board of Appeal found that, so far as the end-user is concerned, the conceptual comparison is neutral, in particular for an end-user who does not understand the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’.
56      That conclusion must be partially upheld in respect of the end-users who will not understand the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ and will not perceive the beginnings of the signs at issue ‘XEN’ and ‘PENTA’ as references to the Greek word ‘xenos’ and the prefix of Greek origin ‘penta’.
57      For the end-users who will understand the suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, but will not perceive the word elements ‘XEN’ and ‘PENTA’ as references to the Greek word ‘xenos’ and the prefix of Greek origin ‘penta’, the signs at issue will have some conceptual similarity.
58      Finally, for the end-users who will perceive the word elements ‘XEN’ or ‘PENTA’ as references to the Greek word ‘xenos’ or the prefix of Greek origin ‘penta’, there will be a conceptual difference between the signs at issue in that regard.
The existence of a likelihood of confusion
59      As has been set out in paragraph 16 above, there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 if, because the trade mark applied for is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
60      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17).
61      In paragraphs 26 to 32 of the contested decision, the Board of Appeal took into account the perspective of the end-users of pharmaceutical preparations for the treatment of diseases of the gastrointestinal system who will not perceive the descriptive character of the shared suffix ‘ASA’. It found that, for that part of the relevant public, notwithstanding its high level of attention, there is a likelihood of confusion between the marks at issue for the goods at issue, in the light of the normal level of inherent distinctiveness of the earlier mark for the goods covered by it and its enhanced distinctiveness for some of them, the identity and strong similarity of the goods covered by the marks at issue and the average degree of visual and phonetic similarity between the signs. As is apparent from paragraph 33 of the contested decision, the Board of Appeal did not consider it necessary to rule on the question whether, with regard to the professional part of the public, there is a likelihood of confusion.
62      The applicant argues that the Board of Appeal’s findings as to the existence of a likelihood of confusion between the marks at issue are incorrect. It submits that there is no likelihood of confusion so far as the end-user is concerned. First, it argues that the earlier mark does not possess enhanced distinctiveness with respect to the end-user. Secondly, it claims that, in assessing the likelihood of confusion, the Board of Appeal ignored the fact that the goods at issue are available on prescription only. There is, therefore, always a chance to examine the signs at issue visually. Thirdly, it claims that the Board of Appeal was wrong to hold that there is an average degree of similarity between the signs: on the contrary, the signs at issue are dissimilar or have a very low degree of similarity. It argues that there are substantial differences in the beginnings of the marks at issue, which are the part of the marks which attract the consumer’s attention. Fourthly, it submits that the attentiveness of the consumer is above average, but the Board of Appeal did not give sufficient consideration to that factor. It argues that, in those circumstances, even if there is some similarity between the signs, arising from the fact that they share the ending ‘ASA’, that is not sufficient to make the marks at issue confusingly similar overall. In the context in which the goods at issue are marketed, the differences created by the beginnings of the words clearly outweigh the similarity at the endings.
63      EUIPO and the intervener dispute those arguments.
64      EUIPO submits that there is a likelihood of confusion between the marks at issue. Taking into account the identity and high degree of similarity between the goods, the average degree of similarity between the signs and the enhanced distinctiveness of the earlier mark, it submits that there is a likelihood of confusion between the marks at issue on the part of the relevant public, in particular of patients, even if they can be said to have a higher than average degree of attentiveness. First, it contends that there is at least an average degree of similarity between the marks at issue. Secondly, it submits that the goods at issue are not limited to pharmaceutical preparations purchased on prescription, and that the phonetic aspect therefore has equal weight when the similarity between the signs is assessed. In any event, even if all the goods at issue were available only on prescription, the phonetic comparison could not be completely excluded and would still play a certain role in assessing whether there is a likelihood of confusion between the marks at issue. It submits that the comparison of the marks is not limited to an assessment of them as at the time of purchase. Thirdly, it maintains that the earlier mark has broader protection, as it was proven to have enhanced distinctiveness as regards end-users for pharmaceutical products for the treatment of diseases of the gastrointestinal tract. Fourthly, it submits that the higher degree of attentiveness expected from end-users cannot rule out the existence of a likelihood of confusion between the marks at issue. In this regard it argues, first of all, that the attentiveness of the relevant public would, for the purpose of assessing likelihood of confusion, be only slightly above average. Consequently, this aspect cannot have decisive weight in the assessment of the likelihood of confusion. Next, the existence of a higher degree of attention on the part of the relevant public does not automatically lead to a finding that there is no likelihood of confusion, when a strong likelihood of confusion is created by other factors. Finally, even a highly attentive public only rarely has the chance to make a direct comparison between the competing marks and must rely on its imperfect recollection of them.
65      The intervener submits that the Board of Appeal was fully entitled to find that there is a likelihood of confusion between the marks at issue. First, it argues that the earlier mark has enhanced distinctiveness with respect to end-users. Secondly, it submits that the Board of Appeal was correct in finding that there is an average degree of similarity between the signs at issue. Thirdly, it maintains that the visual and phonetic similarities are of equal importance. Contrary to the applicant’s submissions, pharmaceutical preparations which are available exclusively on prescription may be ordered orally at the counter. It submits that, in any case, the level of visual and phonetic similarity between the signs at issue is the same. Fourthly, it maintains that the applicant does not advance any argument capable of showing that the Board of Appeal failed to take account of the high level of attentiveness of consumers.
66      As a preliminary point, the applicant’s argument that, for the goods at issue, the visual comparison of the signs is of greater importance than the phonetic comparison, on account of the fact that the earlier mark is used only for prescribed medicines, which cannot be ordered orally over the counter, must be rejected. In that regard, suffice it to recall that the applicant has not disputed the genuine use of the earlier mark and that account must therefore be taken of all the goods for which that mark was registered. The mark was not registered only in respect of pharmaceutical preparations for which a medical prescription is necessary. In any event, even in respect of pharmaceutical preparations for which a medical prescription is necessary, it should be recalled that they are purchased with the assistance of a professional and their purchase may therefore involve a verbal reference to the marks concerned (judgment of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 65). Contrary to what the applicant argues, it cannot therefore be considered that, for the goods at issue, the visual comparison of the signs is of greater importance than their phonetic comparison.
67      As regards the examination of whether there is a likelihood of confusion, it must be recalled that the Board of Appeal confined itself to finding that there is a likelihood of confusion from the point of view of the end-users of the goods at issue. It must therefore be examined whether the Board of Appeal was fully entitled to find that there is a likelihood of confusion at least for a significant part of those end‑users (see paragraph 19 above).
68      In the first place, it must be stated that, for the end-users who will not perceive the shared suffix ‘ASA’ in the marks at issue as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’ and will not identify the word elements ‘PENTA’ and ‘XEN’ as references to the Greek word ‘xenos’ or the prefix of Greek origin ‘penta’, there will be no likelihood of confusion. As set out in paragraphs 42, 50, 51 and 56 above, for those end-users, the signs at issue will have a lower than average degree of visual and phonetic similarity and the conceptual comparison will be neutral. In view of the visual and phonetic differences at the beginnings of the marks at issue, and having regard to the high degree of attention that consumers will have due to the nature of the goods concerned, there is no likelihood that that part of the relevant public will be led to believe that the goods marketed under the mark applied for come from the proprietor of the earlier mark, despite their shared suffix ‘ASA’. This also applies if the earlier mark has enhanced distinctiveness as a result of its use.
69      In the second place, for the end-users who will perceive the shared suffix ‘ASA’ as a reference to the active ingredient ‘5-asa’ or ‘mesalazine’, but will not identify the word elements ‘PENTA’ and ‘XEN’ as references to the prefix of Greek origin ‘penta’ or the Greek word ‘xenos’, admittedly, the signs at issue will have some conceptual similarity (see paragraph 57 above). However, for that part of the relevant public, the visual and phonetic similarity will be low due to the allusive character of the shared suffix ‘ASA’ (see paragraphs 43 and 53 above). Therefore, it must also be concluded that there is no likelihood of confusion for that part of the public, even if the earlier mark has enhanced distinctiveness as a result of its use.
70      In the third place, for the end-users who will perceive the word element ‘XEN’ as a reference to the Greek word ‘xenos’ and/or the word element ‘PENTA’ as a reference to the prefix of Greek origin ‘penta’, suffice it to note that these are not circumstances liable to increase a likelihood of confusion in relation to the groups of end-users taken into account in paragraphs 68 and 69 above. Thus, for those end-users, there will be no likelihood of confusion either.
71      It follows that the Board of Appeal erred in finding that there is a likelihood of confusion at least for a significant part of the end‑users.
72      Finally, as regards the question whether there is a likelihood of confusion for the professional public, which also forms part of the relevant public (see paragraph 20 above), it must be recalled that, as is apparent from paragraph 33 of the contested decision, the Board of Appeal did not rule on that question and it is not for the Court to carry out an assessment on which the Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
73      In the light of the foregoing considerations, the applicant’s single plea in law must be accepted and the contested decision annulled, there being no need to rule on the arguments concerning inadmissibility put forward by EUIPO and the intervener in respect of some of the material that the applicant submitted as an annex to the application.
Costs
74      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
75      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
76      Since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 April 2016 (Case R 3264/2014-4);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Tillotts Pharma AG;
3.      Orders Ferring BV to bear its own costs.
Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg on 19 June 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.