JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 April 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark NIMORAL — Earlier EU word mark NEORAL — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑49/16,
Azanta A/S, established in Hellerup (Denmark), represented by M. Hoffgaard Rasmussen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
Novartis AG, established in Basel (Switzerland),
ACTION brought against the decision of Fourth Board of Appeal of EUIPO of 1 December 2015 (Case R 634/2015-4), relating to opposition proceedings between Novartis and Azanta,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, S. Papasavvas and O. Spineanu-Matei (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 1 February 2016,
having regard to the response lodged at the Court Registry on 21 April 2016,
having regard to the reassignment of the case to the Sixth Chamber and to a new Judge-Rapporteur,
having regard to the fact that no request for a hearing was submitted by the main 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
Background to the dispute
1        On 8 October 2013, the applicant, Azanta A/S, lodged 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).
2        The trade mark for which registration was sought is the word sign NIMORAL.
3        The goods in respect of which registration was sought fall within 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 to the following description: ‘Pharmaceutical preparations for enhancing the effect of radiotherapy on cancer patients’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 226/2013 of 27 November 2013.
5        On 2 December 2013, Novartis AG filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against registration of the trade mark applied for, in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier EU trade mark NEORAL, registered under No 8489031, covering the goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 29 January 2015, the Opposition Division upheld the opposition in its entirety on the basis of Article 8(1)(b) of Regulation No 207/2009.
9        On 27 March 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division in so far as it had upheld Novartis’ opposition.
10      By decision of 1 December 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. As regards the relevant consumer and his level of attention, it found that the goods covered by the earlier mark and by the mark applied for were aimed at particularly attentive health professionals and patients, since the goods were related to serious health issues. The Board of Appeal also noted that the parties did not dispute that the goods were identical. As regards the similarity between the signs at issue, it found that the signs were visually similar to an average degree, since they had almost the same number of letters, five letters placed in the same order and the same beginnings and endings. It considered that the signs at issue were aurally similar to an average degree, since they were pronounced in three syllables, two of which were identical. Conceptually, the Board of Appeal considered that the signs at issue were meaningless and that no comparison could be made. Taking those elements into consideration in the global assessment of the likelihood of confusion and having regard to the average distinctiveness of the earlier mark, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        register the mark applied for.
12      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant puts forward a single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14      The applicant submits that there is no phonetic or conceptual similarity between the marks at issue and that there is only a low degree of visual similarity between those marks. Accordingly, there is no likelihood of confusion.
15      EUIPO disputes the applicant’s arguments.
Preliminary observations
16      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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.
17      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).
18      In addition, 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 marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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).
19      In addition, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).
20      In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must rely on the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
The relevant public
21      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22      For the purposes of defining the relevant public, it is necessary to take into account consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM — MeDiTA Medizinische Kurierdienst (medidata), T‑270/09, not published, EU:T:2010:419, paragraph 28).
23      In the present case, the Board of Appeal took the view, in paragraph 10 of the contested decision, that the part of the public to which the goods covered by the earlier mark and the goods covered by the mark applied for were addressed were health professionals and patients. In particular, it considered that the relevant public was composed of qualified oncologists and health professionals specialised in the administration of radiotherapy to cancer patients as well as the cancer patients themselves. In addition, given that the goods were related to very serious health issues, it considered that the relevant public was particularly attentive. Geographically, the Board of Appeal found that the relevant territory was that of the European Union.
24      The applicant does not call into question EUIPO’s findings in relation to the relevant territory and indicates that it agrees with EUIPO that the marks at issue are addressed to health professionals specialised in the administration of radiotherapy to cancer patients.
25      EUIPO submits that, although health professionals must be included in the definition of the relevant public, patients must also be taken into consideration, as the Board of Appeal pointed out.
26      In that respect, it must be noted that the Board of Appeal rightly considered that the relevant public was composed of health professionals and, as end-consumers, patients (see, to that effect, judgment of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraphs 27 and 29 and the case-law cited). The end-consumers of the goods at issue are cancer patients, while the health professionals are doctors specialised in oncology and doctors specialised in the administration of radiotherapy to cancer patients.
27      In addition, the Board of Appeal’s finding that the relevant public is particularly attentive as regards the goods at issue must also be confirmed.
28      First, health professionals display a high degree of attention when prescribing medicinal products. Secondly, with regard to end-consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the goods at issue are prescribed, having regard to the fact that they are pharmaceutical products (see judgment of 21 October 2008, PRAZOL, T‑95/07, not published, EU:T:2008:455, paragraphs 27 and 29 and the case-law cited).
Comparison of the goods concerned
29      In paragraph 12 of the contested decision, the Board of Appeal considered that the goods covered by the signs at issue were identical. In its view, the earlier mark’s broad term ‘pharmaceutical preparations’ includes the ‘pharmaceutical preparations for enhancing the effect of radiotherapy on cancer patients’ covered by the mark applied for.
30      The Board of Appeal’s conclusion in that respect — which, moreover, the applicant does not dispute — must be confirmed.
The comparison of the signs
31      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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
32      The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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).
Visual comparison
33      The Board of Appeal considered, in paragraph 16 of the contested decision, that there was an average degree of visual similarity between the marks at issue.
34      The applicant, on the other hand, submits that the degree of visual similarity between the marks at issue is very low. It submits in that regard that the mark applied for is composed of seven letters, whereas the earlier mark has only six. Furthermore, the letter ‘m’ in the mark applied for is a wide and prominent letter, which distinguishes the mark applied for from the earlier mark and makes the degree of visual similarity between them low.
35      EUIPO disputes the applicant’s arguments.
36      In the present case, it must be noted that the earlier mark is composed of a single word, namely ‘neoral’, like the mark applied for, which is also composed of a single word, namely ‘nimoral’. As the Board of Appeal rightly pointed out, neither of the marks at issue is composed of more dominant or distinctive elements than the other.
37      The structure of the marks at issue is the same, since they are both composed of a single word element. In addition, the earlier mark is composed of six letters, whereas the mark applied for has seven letters.
38      Moreover, what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (see, to that effect, judgment of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83).
39      In that respect, five of the letters of the marks at issue are identical and placed in the same order, namely the letter ‘n’ by which the marks at issue begin and the letters ‘o’, ‘r’, ‘a’, and ‘l’ by which they end, which also form the suffix ‘oral’.
40      Thus, the differences between the marks at issue are limited to their middle sections, namely the vowel ‘e’ in the earlier mark and the letters ‘i’ and ‘m’ in the mark applied for. While it is true that, in general, with regard to relatively short word signs, the central elements are as important as the elements at the beginning and end of the signs, slight differences in their middle sections, such as in the present case, will not attract the consumer’s attention any more than the parts at the beginning and end of the signs (see, to that effect, judgment of 9 July 2015, Nanu-Nana Joachim Hoepp v OHIM — Vincci Hoteles (NANU), T‑89/11, not published, EU:T:2015:479, paragraph 57 and the case-law cited). That is because, inter alia, the relevant public normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25) and because the marks at issue have no particular features, since, as the Board of Appeal rightly noted, neither of them is composed of more dominant or distinctive elements than the other (see paragraph 36 above).
41      It follows from the foregoing that the small differences as regards the letters of which the marks at issue are composed, or the number of those letters, are insufficient to exclude a finding of visual similarity.
42      It must therefore be held that the degree of visual similarity between the marks at issue is average.
Phonetic comparison
43      The applicant submits, in essence, that the marks at issue are not similar phonetically, since the earlier mark is pronounced smoothly and in two syllables, given the fact that the vowel ‘o’ and the vowel ‘e’, which are placed next to each other, are pronounced together, whereas the mark applied for is pronounced in a staccato manner and in three syllables. In support of its argument, it refers to the pronunciation of certain words in the English language, in which vowels placed next to each other are pronounced as one sound.
44      EUIPO disputes the applicant’s arguments.
45      In the first place, it must be noted that, contrary to the applicant’s assertions, there is no specific rule in English according to which the vowels ‘e’ and ‘o’ must be pronounced as a diphthong merely because they are placed next to each other. The examples cited by the applicant also cannot support its argument, since, on the one hand, they relate exclusively to the vowels ‘e’, ‘a’, and ‘u’, but not the vowel ‘o’ and, on the other hand, they relate only to the pronunciation of certain words in the English language.
46      In the second place, the Board of Appeal’s conclusion that the marks at issue are both composed of three syllables, at least for a very substantial part of the relevant public, must be confirmed. In that respect, the third syllable ‘ral’ is identical in the marks at issue, whereas the second syllable is almost identical, the only difference being the letter ‘m’ in the mark applied for, which is, moreover, a phonetically weak consonant (see, to that effect, judgment of 16 October 2013, Mundipharma v OHIM — AFT Pharmaceuticals (Maxigesic), T‑328/12, not published, EU:T:2013:537, paragraph 51). As regard the first syllable, the only difference between the marks at issue is the vowel.
47      Thus, the very small phonetic difference between the marks at issue, owing to the pronunciation of the first two syllables, which are nevertheless close in sound (see, to that effect, judgment of 3 March 2015, Bial-Portela v OHIM — Isdin (ZEBEXIR), T‑366/11 RENV, not published, EU:T:2015:129, paragraph 44), is not sufficient to counteract the existence of a certain phonetic similarity resulting from the identical pronunciation of the third syllable.
48      Consequently, it cannot be maintained, as the applicant asserts, that the marks at issue have two completely different pronunciations.
49      Accordingly, the Board of Appeal’s conclusion that the marks at issue have an average degree of phonetic similarity must be upheld.
Conceptual comparison
50      The applicant submits that, contrary to the position adopted by the Board of Appeal in the contested decision, the earlier mark has a conceptual meaning, since it will be perceived as referring to newness, given the element ‘neo’. In addition, it submits that, since the marks at issue end in the element ‘oral’, they will be perceived as being connected to the oral consumption of the goods at issue. The applicant infers from this that, in the marks at issue, the first part will be dominant. Thus, the element ‘ne’ in the earlier mark and the element ‘nim’ in the mark applied for cannot be regarded as similar and could not give rise to a likelihood of confusion on the part of the relevant public.
51      EUIPO disputes the applicant’s arguments.
52      It must be recalled, first of all, that, according to the case-law, the conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities between those marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (see judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 93 and the case-law cited).
53      In the contested decision, the Board of Appeal considered that the marks at issue were meaningless and that no comparison could be made.
54      Contrary to the applicant’s submission, that conclusion cannot be called into question by the argument that the consumer will perceive the element ‘neo’ in the earlier mark as meaning ‘new’ or ‘recent’.
55      Although the term ‘neo’ has a certain evocative force, the earlier mark has no meaning in the relevant languages. Consequently, neither of the marks at issue taken as a whole can be regarded as having a clear and specific meaning that the public will be able to grasp immediately within the meaning of the case-law cited in paragraph 52 above.
56      Furthermore, in its application, the applicant argues that the term ‘oral’, contained in the marks at issue, will be perceived as descriptive of the goods concerned, since those goods must be consumed orally.
57      Without it being necessary to examine the issue, raised by EUIPO, of the admissibility of that argument, it must be noted that it cannot succeed, since, as the vowel ‘o’ was already included in the element ‘neo’, it cannot also be taken into account in the element ‘oral’. Therefore, the reference to the oral consumption of the medicinal products cannot be accepted. In any event, even if that were the case, for the section of the relevant public which would understand its meaning, the term ‘oral’ in both of the marks at issue could only create a conceptual similarity between them, contrary to the applicant’s assertions.
58      Consequently, it must be found that the relevant public will not attribute any particular meaning to either of the marks at issue. Accordingly, no conceptual comparison may be made in the present case, as the Board of Appeal rightly found.
59      It follows from the foregoing that, by taking into consideration the fact that the goods at issue are identical, that the signs at issue are visually and phonetically similar to an average degree and that it is not possible to compare them conceptually, the Board of Appeal rightly concluded that those signs were similar.
The likelihood of confusion
60      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.
61      It follows from the case-law that a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and, conversely, a low degree of similarity between the marks may be offset by a high degree of similarity between the goods or services (see, to that effect, 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). A fortiori, when the goods and services are identical, a moderate degree of similarity between the signs may lead to a likelihood of confusion (see, to that effect, judgment of 13 November 2012, tesa v OHIM — Superquímica (tesa TACK), T‑555/11, not published, EU:T:2012:594, paragraph 53).
62      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
63      The Board of Appeal’s assessment concerning the existence of a likelihood of confusion between the marks at issue must be examined in the light of the foregoing.
64      In the contested decision, the Board of Appeal considered, in essence, that, since the goods at issue are identical, the marks at issue are visually and phonetically similar and the earlier mark has an average degree of distinctiveness, there was a likelihood of confusion on the part of the relevant public which is particularly attentive, as noted in paragraph 28 above.
65      The applicant submits that there is no likelihood of confusion, because the degree of similarity between the marks at issue is low and the relevant public is particularly attentive. The applicant argues that, given the level of attention of the relevant public, it will be able to distinguish between goods with similar names.
66      EUIPO disputes the applicant’s arguments.
67      It must be recalled that the fact that the relevant public consists of end-consumers amongst others, whose level of attention can be considered to be above average, is not sufficient, given the identical nature of the goods concerned and the similarity of the signs in dispute, to rule out the possibility that those consumers might believe that the goods come from the same undertaking or, as the case may be, from economically linked undertakings (judgment of 21 October 2008, PRAZOL, T‑95/07, not published, EU:T:2008:455, paragraph 56).
68      Furthermore, account should be taken of the fact that even a very attentive public only rarely has the chance to make a direct comparison between the different marks and must rely on the imperfect picture of them that he has kept in mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 26 and 28).
69      In the present case, given that the goods at issue are identical and the marks at issue are similar to an average degree, the Board of Appeal’s conclusion that there is a likelihood of confusion cannot be called into question by the degree of attention of the relevant public alone, even if it is particularly high.
70      It follows from all of the foregoing that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, accordingly, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
71      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Azanta A/S to pay the costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 6 April 2017.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.