JUDGMENT OF THE GENERAL COURT (Third Chamber)
6 November 2024 (*)
( EU trade mark – Opposition proceedings – Application for EU word
mark DAOgest – Earlier EU word mark DAOSIN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑396/23,
Stada Arzneimittel AG,
established in Bad Vilbel (Germany), represented by J.-C. Plate, R. Kaase and
K. Rachlitz, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by D. Stoyanova-Valchanova and
V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Bioiberica, SAU,
established in Palafolls (Spain), represented by
E. Sugrañes Coca, lawyer,
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, acting as President, I. Nõmm and
G. Steinfatt (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on
1 July
2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Stada Arzneimittel AG, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 April 2023 (Case
R 1384/2022‑2) (‘the contested decision’).
Background to the dispute
2        On 5 November 2020, the intervener, Bioiberica, SAU, filed an application with EUIPO for registration of an EU trade mark for the word sign DAOgest.
3        Following the restriction made in the course of the proceedings before EUIPO, the mark applied for designated goods in Classes 1 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding for each of those classes to the following description:
–        Class 1: ‘Chemicals for the pharmaceutical industry, chemicals for the nutraceutical industry, chemical products for use in the food industry and chemicals for cosmetic industries; biological preparations, in relation to the following fields: pharmaceutical industry, food industry, cosmetics industry, the nutraceutical industry; diamine oxidase-based ingredients for use in the manufacture of dietetic and functional foods, nutraceuticals,
nutritional and food supplements and pharmaceuticals for medical and veterinary purposes, including cosmetics’;
–        Class 5: ‘Pharmaceutical preparations for medical and veterinary use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; disinfectants; pharmaceuticals, dietary foods and functional foods, nutraceutical foods and food and nutritional supplements, based on diamine oxidase’.
4        On 26 May
2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier rights:
–        EU word mark No 6 385 355 DAOSIN, filed on 23 October 2007 and registered on 29 September 2008, designating goods in Class 5 corresponding to the following description: ‘Dietetic substances for medical use’;
–        international registration No 1 065 130 designating the European Union in respect of the word sign DAOSIN, registered on 12 November 2010, designating goods in Classes 5, 10, 29 and 32 and corresponding to the following description:
–        Class 5: ‘Dietetic preparations adapted for medical use; pharmaceutical preparations; chemico-pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; confectionary, medicated; biological preparations for medical purposes; chemical preparations for medical purposes; enzymes and enzyme preparations for medical purposes;
ferments for medical purposes; dietetic beverages adapted for medical purposes; medicinal drinks; syrups for medical purposes; dietetic foods adapted for medical purposes; diagnostic preparations for medical purposes; chemical reagents for medical purposes; nutritional additives for medical purposes’;
–        Class 10: ‘Surgical and medical apparatus and instruments; [orthopaedic] articles; diagnostic apparatus for medical purposes’;
–        Class 29:
‘Nutritional additives and dietetic foods not for medical use, mainly consisting of proteins included in this class’;
–        Class 32: ‘Non-alcoholic drinks’.
6        The ground relied on in support of the opposition
was that set out in Article 8(1)(b) of 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).
7        On 28 June 2022, the Opposition Division rejected the opposition in its entirety.
8        On 28 July 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that there was no likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
12      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        order the unsuccessful party to pay the costs.
Law
13      The applicant relies on three pleas in law, alleging, first, infringement of Article 94(1) of Regulation 2017/1001, secondly, infringement of Article 95(1) of the same regulation and, thirdly, infringement of Article 8(1)(b) of that regulation.
The third plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must
not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the
trade marks
there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
The relevant public
15      In paragraphs 23 to 26 of the contested decision, the Board of Appeal found that the goods at issue in Class 5
targeted the general public as well as professionals and that the relevant public’s level of attention with regard to those goods was high, given that they had an impact on the state of health and had in common a purpose related to preventing or treating a disease. Even the goods that are not pharmaceuticals are offered to the relevant public through the same distribution channels as the goods covered by the earlier marks, particularly pharmacies and drug stores. Lastly, the goods at issue in Class 1 are
only of interest to attentive professionals,
in so far as those goods consist of chemicals or biological preparations intended for specific use in industry, science and laboratories. The Board of Appeal found a high degree of attention on the part of the relevant public
as regards all of the goods covered by the signs at issue.
16      The applicant disputes the Board of Appeal’s finding as to the level of attention of the relevant public. First of all, it argues that the relevant public’s
level of attention is
not high for health-related products which are sold without prescription, are intended for all consumers and the purchase of which does not require precise or considered selection. Next, the degree of attention is relatively low as regards dietary supplements, dietary foodstuffs and beverages, also included in Class 5 and which could be easily obtained and were intended for daily use. Lastly, the Board of Appeal erred in assuming a high degree of attention for the goods in Class 1 covered by the mark applied for.
The fact that the items in question are aimed at specialists does not mean that the degree of attention is always high.
17      EUIPO and the intervener dispute the
applicant’s arguments. EUIPO submits, as regards the goods at issue in Class 5 and in particular nutritional supplements, that the level of attention is higher than average when that type of good is purchased. The intervener considers, as regards the goods in Class 5, that non-professionals also exhibit a high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, given that those goods affect the
state of their health or that of animals. In addition, EUIPO considers that the relevant public’s level of attention with regard to the contested goods in Class 1 is correctly defined, since those goods consist of chemicals or biological preparations for specific use in industry, science and laboratories, the purchase of which by relevant professionals entails a careful examination of their properties and the improper use of which is likely to be dangerous or to cause damage. According to the intervener, the goods in Class 1 are clearly only of interest to attentive professionals. The fact that those goods affect people’s health means that the relevant public’s level of attention will be above average, at least.
–       The relevant public’s level of attention with regard to the goods at issue in Class 5
18      In the first place, as regards first of all the ‘pharmaceutical preparations for medical and veterinary use’, the ‘pharmaceutical preparations’ and the ‘chemico-pharmaceutical preparations’,
it is apparent from the case-law that the pharmaceutical preparations and substances in Class 5 share the essential purpose of being marketed on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian. In view of their direct effect on the health of the user and the fact that they are intended to treat specific diseases, consumers must be regarded as generally well informed and particularly attentive and circumspect, thus the level of attention of the relevant public will be high, both for the public at large and for the professional public
(see judgments of 20 September 2018, Kwizda Holding
v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 29 and the case-law cited, and of 19 September 2019, WhiteWave Services
v EUIPO – Fernandes (VeGa one), T‑176/17, not published, EU:T:2019:625, paragraph 34 and the case-law cited). The same conclusion must be drawn as regards ‘dietetic beverages adapted for medical purposes’, ‘medicinal drinks’ and ‘syrups for medical purposes’ (judgment of 24 October 2019, MSI Svetovanje
v EUIPO – Industrial Farmaceutica Cantabria (nume), T‑41/19, not published, EU:T:2019:764, paragraph 32).
19      Next, as regards the ‘chemical reagents for medical purposes’, it is apparent from the case-law that the level of attention on the part of the relevant public as regards pharmaceutical chemical and veterinary reagents is considered to be high (judgment of 5 October 2020, Laboratorios Ern
v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraph 32). The same applies to the ‘biological preparations for medical purposes’, the ‘pharmaceutical preparations’ (see, to that effect, judgment of 28 November 2017, Laboratorios Ern
v EUIPO – Sharma (NRIM Life Sciences), T‑909/16, not published, EU:T:2017:843, paragraph 21), the ‘chemical preparations for medical purposes’ (see, to that effect, judgment of 10 December 2014, Novartis v OHIM – Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 24) and the ‘diagnostic preparations for medical purposes’ (see,
to that effect, judgment of 10 November 2021, Stada Arzneimittel
v EUIPO – Pfizer (RUXYMLA), T‑248/20, not published, EU:T:2021:772, paragraphs 25 and 26).
20      Furthermore, as regards the ‘dietary supplements for [human beings]’, the ‘dietary foods and functional foods, nutraceutical foods and food and nutritional supplements, based on diamine oxidase’, the ‘dietetic food and substances adapted for [medical] use’;
the dietetic foods adapted for medical purposes’; the dietetic substances adapted for medical use’ and the ‘dietetic preparations adapted for medical use’, it is apparent from the case-law that dietetic products in general and dietary supplements, which strictly speaking are not medicines but nevertheless constitute goods in the health sector, since in general they are intended to improve health, may be regarded as products to which consumers who are reasonably well informed and reasonably observant and circumspect pay a high level of attention (see judgment of 16 December 2020, Gustopharma Consumer Health
v EUIPO – Helixor Heilmittel (HELIX ELIXIR), T‑883/19, not published, EU:T:2020:617, paragraph 30 and the case-law cited).
21      Moreover, the ‘sanitary preparations for medical purposes’ and the ‘disinfectants’ are not simple, everyday hygiene
products or products more commonly used but products of a medical nature, so the level of attention of the relevant public with regard to those products is also high
(see, to that effect, judgments of 10 February 2015, Boehringer Ingelheim International
v OHIM – Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 46; of 28 November 2019, August Wolff v EUIPO – Faes Farma (DermoFaes), T‑643/18, not published, EU:T:2019:818, paragraphs 10
and 29;
and of
13 December 2023, Laboratorios Ern
v EUIPO – Ahlberg-Dollarstore (A’PEAL), T‑56/23, not published, EU:T:2023:798, paragraphs 15 and 17).
22      Lastly, all the other goods at issue in Class 5 and intended for medical use also have
a direct impact on the health of the user, so the level of attention of the relevant public will be high (see, to that effect, judgment of 13 December 2017, Laboratorios Ern v EUIPO – Ascendo Medienagentur (SLIMDYNAMICS), T‑700/16, not published, EU:T:2017:896, paragraph 24).
23      In the second place, regarding ‘food[s] for babies’, whilst they do not, as such, constitute pharmaceutical products, they fall within the ‘paramedical’ field, that is to say, they are linked, in the broad sense, to health (judgment of 6 April 2022, Biogena v EUIPO – Alter Farmacia (NUTRIFEM AGNUBALANCE), T‑370/21, not published,
EU:T:2022:215, paragraphs 53 and 54). Those goods are intended either specifically as baby food or to meet medical requirements, which necessarily requires a higher level of attention from the target public (judgment of 10 February 2015, ANGIPAX, T‑368/13, not published, EU:T:2015:81, paragraph 46).
24      In the third place, as regards the ‘pharmaceutical preparations for [veterinary] use’, the ‘dietary supplements for [animals]’ and the ‘dietetic food and substances adapted for [veterinary] use’, it is apparent from the case-law that the relevant public pays a high level of attention with regard to veterinary products, in so far as those affect animal health (judgments of 13 June 2019, Pet King Brands v EUIPO – Virbac (SUIMOX), T‑366/18, not published, EU:T:2019:410, paragraphs 50 and 52, and of 10 November 2021, Stada Arzneimittel v EUIPO – Pfizer (RUXIMBLIS), T‑542/20, not published, EU:T:2021:775, paragraphs 26 and 27).
25      It follows that the Board of Appeal did not err in finding, in paragraph 24 of the contested decision, that the level of attention of the relevant public with regard to the goods covered by the marks at issue in
Class 5 was high.
26      That outcome cannot be called into question by the reference made by the applicant to the judgment of 6 April 2022, Moio v EUIPO – Paul Hartmann (moio.care) (T‑276/21, not published, EU:T:2022:221, paragraph 29). As EUIPO rightly argues, the goods at issue in the case that gave rise to that judgment are different from those in the present case, so that the findings of the Court in that judgment which relate to the degree of attention of the relevant public cannot be transposed to the case at hand.
–       The level of attention of the relevant public with regard to the goods at issue in Class 1
27      As regards the goods at issue in Class 1, the applicant merely asserts that the Board of Appeal’s assessment as to the level of attention of the relevant public with regard to those goods was wrong, and that the fact that the goods are intended only for specialists does not mean that the degree of attention is high.
28      It is apparent from the case-law that the specialised public is likely to exhibit a high level of attention when selecting goods (see, to that effect, judgments of 20 April 2005, Faber Chimica v OHIM – Industrias Quimicas Naber (Faber), T‑211/03, EU:T:2005:135, paragraph 24; of 28 October 2009, CureVac v OHIM – Qiagen (RNAiFect), T‑80/08, EU:T:2009:416, paragraph 29; and of 9 February 2010, PromoCell bioscience alive v OHIM (SupplementPack), T‑113/09, not published, EU:T:2010:34, paragraph 31).
29      In the present case, all of the goods at issue in Class 1, which consist of chemicals, biological preparations and diamine oxidase-based ingredients, are intended for use in the pharmaceutical industry, the nutraceutical industry, the food industry or the cosmetics industry and thus for a public of professionals with specific expertise or professional knowledge in the fields of chemistry, biology or pharmacy.
30      Having regard to the specific use for which the goods in Class 1 are intended, the consequence of which is that the relevant public consists solely of professionals, the Board of Appeal was entitled to conclude that there was a high level of attention on the part of the relevant public with regard to those goods.
31      It follows that the Board of Appeal was right to find, in paragraph 26 of the contested decision, that the level of attention on the part of the relevant public was also high with regard to the goods in Class 1.
Comparison of the goods at issue
32      In paragraph 21 of the contested decision, the Board of Appeal confirmed the analysis whereby the Opposition Division indicated that some of the goods at issue were identical or similar and, taking the same approach as the Opposition Division, the Board of Appeal proceeded as if that were the case for all the goods at issue.
Comparison of the signs at issue
–       The distinctive and dominant elements of the signs at issue
33      In paragraph 32 of the contested decision, the Board of Appeal observed that, although part of the relevant public, in particular medical professionals, might, as the intervener claimed, perceive the prefix
‘dao’ in each of the signs at issue as a reference to the enzyme ‘diamine oxydase’, which could be included in or relate to the goods designated by those signs, that would not be the case for the majority of the public at large, who would not perceive that meaning. Therefore, like
the Opposition Division, the Board of Appeal held in paragraphs 33 and 34 of the contested decision that the signs at issue were devoid of any meaning, in all their component parts,
for the majority of the general public, on which it decided, therefore, to focus its analysis.
It concluded that the signs at issue had a degree of inherent distinctiveness which, in the context of the contested decision, must be understood as being, in essence, average.
34      There is no need to call into question those assessments by the Board of Appeal, which, moreover, have not been disputed by the applicant.
–       Visual similarity
35      The applicant claims that the signs at issue are visually similar at least to an average degree. First, the Board of Appeal did not take sufficient account of the fact that the signs at issue were identical at the beginning, namely the element ‘dao’, and were almost
identical in length.
The endings
‘sin’ in the earlier marks and ‘gest’ in the mark applied for could easily be overlooked due to their position at the end. The Board of Appeal did not take sufficient account of the fact that the consumer tends to focus on the beginning of the sign. Secondly, the letter ‘i’ in the earlier marks has topography similar to that of the letter ‘e’ in the mark applied for. Thirdly, the signs at issue also have the letter ‘s’ in common.
36      EUIPO and the intervener dispute the applicant’s arguments. EUIPO considers that the applicant does not take sufficient account of the fact that the signs at issue are not identical in length. A difference in one letter will not go unnoticed in signs that are not particularly long.
The intervener points out that the shorter the sign, the more able the public will be to perceive all its various elements. According to EUIPO, the signs at issue have different endings which are at least as long as the coinciding elements. In addition, EUIPO and the intervener point out that there are differences as to the form of the letters ‘e’ and ‘i’. EUIPO considers that the Board of Appeal did not
fail to take into account
the fact that the signs at issue contain the letter ‘s’. EUIPO and the intervener consider that the applicant does not put forward convincing arguments as to the Board of Appeal’s assessment that the common letter ‘s’ does not increase the similarity, due to its different position in the signs at issue. Lastly, according to the intervener, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing, that must be taken into account.
37      In paragraphs 35 to 38 of the contested decision, the Board of Appeal found that the signs at issue share the same initial sequence of letters ‘d’, ‘a’ and ‘o’ but differ in length, given that the earlier marks are composed of six letters, whereas the mark applied for contains seven.
The signs also differ in their endings, which are significantly different from each other. In the mark applied for, the part at the end is longer than the coinciding element. The letter ‘s’, whilst contained in the ending of all the signs, is placed in a different position. According to the Board of Appeal, the signs at issue have only a low degree of visual similarity.
38      According to settled case-law, 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 judgments of 30 January 2019, Bekat v EUIPO – Borbet (ARBET), T‑79/18, not published, EU:T:2019:39, paragraph 29
and the case-law cited, and of 8 September 2021, Cara Therapeutics v EUIPO – Gebro Holding (KORSUVA), T‑584/20, not published, EU:T:2021:541, paragraph 27 and the case-law cited). As the Board of Appeal rightly found, the signs at issue coincide in their initial part ‘dao’. The presence in the signs at issue of the
identical sequence of three letters, which constitutes half of the characters in the earlier marks and almost half of the characters in the mark applied for, produces an impression of visual similarity between the signs at issue.
39      The mark applied for comprises
seven letters, whereas the earlier marks contain
six. However, the mere fact that the marks at issue are of different lengths is not likely to offset
the impression of similarity that arises from the presence of the same sequence of letters at the beginning of them (see, to that effect, judgments of 13 June
2012, XXXLutz Marken v OHIM – Meyer Manufacturing (CIRCON), T‑542/10, not published, EU:T:2012:294, paragraph 44, and of 28 November 2019, Soundio v EUIPO – Telefónica Germany (Vibble), T‑665/18, not
published, EU:T:2019:825, paragraph 49).
40      Furthermore, the difference in the length of the signs at issue is minimal. As the applicant rightly points out, the relevant public will perceive marks almost identical in length.
41      The Board of Appeal recalled that it was apparent from the case-law that the consumer was deemed generally to pay greater attention to the beginning of a mark than to its end, since the initial part of a mark normally has a greater impact, both visually and phonetically, than the final part (see judgment of 22 May
2012, Sport Eybl & Sports Experts v OHIM – Seven (SEVEN SUMMITS), T‑179/11, not
published, EU:T:2012:254, paragraph 36 and the case-law cited). That is largely due to the fact that, within the European Union, a sign is normally read from left to right and from top to bottom (judgment of 19 January 2022, Construcciones Electromecánicas Sabero v EUIPO – Magdalenas de las Heras (Heras Bareche), T‑99/21, not published, EU:T:2022:14,
paragraph 95), so that the relevant public’s attention is drawn first to the beginning of a word mark or to the word element of a complex mark.
42      However, as indicated by the adverb ‘generally’ in the case-law cited in paragraph 41 above, that presumption cannot apply in all cases (see judgments of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM – Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58 and the case-law cited, and of 12 July 2019, MAN Truck & Bus v EUIPO – Halla Holdings (MANDO), T‑698/17, not published, EU:T:2019:524, paragraph 62 and the case-law cited).
43      The Board of Appeal was therefore right to point out that, in any case,
examination of the similarity of the marks had to take account of the overall impression produced by them, so that the beginning of a word mark could not, in any event, be considered more important than its ending.
However, in the present case, it did not explain whether, and, if so, why, the endings of the signs at issue would draw the attention of the relevant public in the same way as, or to a greater degree than, their
beginnings.
44      If
the Board of Appeal’s finding in paragraph 38 of the contested decision that, in the mark applied for, the length of its ending was greater than the coinciding component should
be understood as providing an explanation in that regard, it must nevertheless be stated that the difference in length is minimal. That ending contains four letters, whereas the common element ‘dao’ contains three letters.
45      Lastly, whilst the Board of Appeal rightly pointed out that the letter ‘s’, contained both in the ending of the mark applied for and in that of the earlier marks, was placed in a different position, the fact remains that that letter is contained in each of the signs at issue and in each case in the final part of those signs, even if it is in sixth position in the mark applied for and the fourth position in the earlier marks.
46      As the Board of Appeal rightly pointed out in paragraph 31 of the contested decision, in the case of word marks, it is the word itself that is protected and not its written form, therefore it is irrelevant whether a word mark is represented in upper or lower case, since word marks which differ only in upper- or lower-case letters are deemed to be identical (see judgments of 11 June
2014, Golam v OHIM – meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 41
and the case-law cited; of 25 November 2015, Soprema v OHIM – Sopro Bauchemie (SOPRAPUR), T‑763/14, not published, EU:T:2015:883, paragraph 56 and the case-law cited; and of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 55 and the case-law cited). Accordingly, the use of lower-case and upper-case letters has no bearing on the assessment of the similarity of word marks (judgment of 28 November 2019, Vibble, T‑665/18, not published, EU:T:2019:825, paragraph 50). It necessarily follows that when comparing the visual aspects of signs, any irregular capitalisation of one of the signs at issue cannot be taken into account.
Therefore, the fact that the component ‘dao’ in the mark applied for is written in upper case, whereas its ending ‘gest’ is in represented in
lower case,
does not diminish the similarity of the signs at issue.
47      In conclusion, the signs at issue consist of six and seven letters respectively, the first three of which, representing half of the earlier marks and almost half of the mark applied for, are identical. They also share the letter ‘s’, in fourth position in the earlier marks and sixth position
in the mark applied for. Given that all the components of the signs at issue are distinctive, none of them being dominant, the attention of the relevant public will be drawn, in the first instance, to the identical beginning of the signs at issue. In the overall impression, the elements of similarity between those signs globally prevail over the elements of dissimilarity. In those circumstances, it must be held that the signs in question are visually similar, not to a low degree, as the Board of Appeal found, but to an average degree. Accordingly, the Board of Appeal made an error of assessment in considering that the signs at issue were visually similar only to a low degree.
–       Phonetic similarity
48      The applicant claims that the signs at issue are phonetically similar at least to an average degree.
First, the Board of Appeal took incorrect facts into account when stating, in paragraph 39 of the contested decision, that the marks at issue were pronounced in two syllables, when in reality they consisted of three syllables, two of which were identical. Secondly, the signs at issue coincided in their initial parts, namely the element ‘dao’, as well as in the letter ‘s’. Thirdly, the letters ‘i’ in the earlier marks and
‘e’ in the mark applied for are pronounced in a similar way in English.
49      EUIPO and the intervener dispute the applicant’s arguments. EUIPO points out that, irrespective of the exact number of syllables
in the
coinciding element ‘dao’, the Board of Appeal held that that element would be pronounced in the same way. The argument put forward by the applicant in that regard is, therefore, ineffective. Furthermore, according to EUIPO, even if the letter ‘e’ in English on its own may be pronounced ‘i’, that does not call into question the Board of Appeal’s finding that the differing syllable in the signs has no overlapping element. The intervener submits that the elements ‘sin’ and ‘gest’, which are pronounced differently, constitute the dominant elements of the signs at issue and thus cannot be ignored in the phonetic comparison of the signs at issue.
50      In paragraphs 39 to 41 of the contested decision, the Board of Appeal found that the marks at issue were pronounced in two syllables, the first
of which was pronounced identically, whereas the second presented no overlapping element that would trigger a similarity. Despite the presence of the letter ‘s’ in the second syllable of the signs at issue, the fact that it is positioned differently in the components in question does not increase the phonetic similarity between the signs. Accordingly, the signs at issue are phonetically similar to a low degree.
51      However, first, in line with the applicant’s view, it must be held that the relevant public will pronounce the signs at issue in three syllables, namely ‘da’, ‘o’ and ‘gest’ for the mark applied for and ‘da’, ‘o’ and ‘sin’ for the earlier marks. Indeed, those signs include three vowels.
The Board of Appeal
did not state that the combination of letters ‘ao’ is a diphthong and is therefore pronounced as a single syllable, nor did it explain in which language that combination could be perceived as a diphthong.
52      It follows that the signs at issue coincide in two of their three syllables, the first of which, in the absence of elements that are dominant or more distinctive than others, is likely to attract the most attention from the relevant public (see paragraph 41 above). Furthermore, even if the signs at issue were to be pronounced in two syllables, the fact remains that they coincide in half of their syllables,
since the element ‘dao’
is identical. The result, in any event, is that the signs at issue have an average degree of phonetic similarity.
53      Therefore, the Board of Appeal made an error of assessment in holding that the signs at issue had a low degree of phonetic similarity.
–       Conceptual similarity
54      In paragraph 43 of the contested decision, the Board of Appeal held that the signs at issue had no meaning for the relevant public, with the result that
a conceptual comparison of the signs at issue was not possible.
55      There is no need to call into question that assessment by the Board of Appeal, which, moreover, has not been disputed by the applicant.
The distinctive character of the earlier marks
56      In paragraph 47 of the contested decision, the Board of Appeal, in line with the view of the Opposition Division and for reasons of procedural economy,
in so far as that allowed it not to examine the proof of use provided by the applicant, assumed that the earlier marks had enhanced distinctiveness, acquired through use. At the hearing, EUIPO
confirmed that, in the context of the contested decision, the Board of Appeal had thus presupposed that those marks were highly distinctive.
The global assessment of the likelihood of confusion
57      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.
The likelihood of confusion must be assessed globally, according to the perception the relevant public has of the signs and of the goods or services in question and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (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).
58      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative
(see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
59      The global assessment implies some interdependence between the relevant factors,
and in particular a similarity between the trade marks and between the goods or
services covered. Accordingly, a lesser degree of similarity between those goods or
services may be offset by a greater degree of similarity between the marks, and vice
versa
(see judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19 and the case-law cited).
60      The applicant claims that, in the global assessment of the likelihood of confusion, the Board of Appeal did not correctly apply the principle of interdependence of the relevant factors. The Board of Appeal simply denied the existence of a likelihood of confusion due to the relevant public’s heightened degree of attention and did not take sufficient account of the identity of the goods or the enhanced distinctiveness of the earlier marks. In particular, the Board of Appeal erred in finding, in paragraph 55 of the contested decision, that a low degree of similarity between the signs would exclude a likelihood of confusion, despite the identity of the goods in question and the enhanced distinctiveness of the earlier marks. In any case, the signs at issue are similar at least to an average degree.
61      EUIPO and the intervener dispute the applicant’s arguments. According to EUIPO, there is nothing to preclude a finding that, in the light of the circumstances of a particular case, there is no likelihood of confusion, even where the goods are identical and there is a low degree of similarity between the marks at issue. Similarly, an enhanced distinctiveness of the earlier marks does not and cannot automatically lead to a finding of a likelihood of confusion. Furthermore, whilst the relevant public only rarely has the chance to make a direct comparison between the different marks, a high level of attention on the part of the relevant public may lead to the conclusion that it will not confuse the signs at issue. According to the intervener, given that the element ‘dao’ is weakly distinctive, attention must be focused on the other dominant elements ‘sin’ and ‘gest’, which have a considerable impact on the overall impression of the signs at issue, thereby counterbalancing their similarities. The differences are even more evident
for the part of the relevant public paying a high
degree of attention.
As the signs are different, there is no need to compare the goods covered by the signs at issue. In any case,
the goods in question are not all similar.
62      In the present case, the Board of Appeal’s conclusion, in paragraph 56 of the contested decision, that there was no likelihood of confusion on the part of the relevant public, was based on a number of inaccuracies since, contrary to its finding, the signs at issue have an average degree of visual similarity (see paragraph 47 above) and of phonetic similarity (see paragraphs 52 and 53 above).
63      Moreover, as to some other relevant factors, the Board of Appeal relied on mere suppositions in assuming that certain goods at issue were identical or similar (see paragraph 32 above) and that the earlier marks had an enhanced distinctiveness, acquired through use. However, since the merits of those factors were not assessed by the Board of Appeal in the contested decision, the Court is not itself entitled to assess them.
It is not for the Court, in the context of its review of the legality of the contested decision, to carry out an assessment on which the Board of Appeal has not adopted a position (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 52, and of 2 June 2021, Himmel v EUIPO – Ramirez Monfort (Hispano Suiza), T‑177/20, EU:T:2021:312, paragraph 64).
64      Accordingly, unless it replaces the Board of Appeal in assessing the merits of the factors referred to in paragraph 63 above, the Court is not in a position to rule on the existence of a likelihood of confusion on the part of the relevant public.
65      In the light of all the foregoing considerations, the contested decision must be annulled, without it being necessary to rule on the first and second pleas in law raised by the applicant.
Costs
66      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.
67      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
68      Pursuant to Article 138(3) of the Rules of Procedure, the intervener is to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 April 2023 (Case R 1384/2022-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by Stada Arzneimittel AG;
3.      Orders Bioiberica, SAU to bear its own costs.
Škvařilová-Pelzl
Nõmm
Steinfatt
Delivered in open court in Luxembourg on 6 November 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.