JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
16 March 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark APIAL – Earlier EU word mark APIRETAL – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – No damage to reputation – Article 8(5) of Regulation 2017/1001 – Evidence submitted for the first time before the General Court)
In Case T‑315/21,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by I. Miralles Llorca, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by M. Capostagno and J. Ivanauskas, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Nordesta GmbH, established in Munich (Germany), represented by J. Künzel, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 25 March 2021 (Case R 1560/2020‑4), relating to opposition proceedings between Laboratorios Ern and Nordesta,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli (Rapporteur), President, S. Frimodt Nielsen and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 June 2021,
having regard to the response of EUIPO lodged at the Court Registry on 29 July 2021,
having regard to the response of the intervener lodged at the Court Registry on 13 August 2021,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 20 September 2018, the intervener, Nordesta GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European
Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the word sign APIAL.
3        The goods in respect of which registration was sought are in Classes 3, 4 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 correspond, for each of those classes, to the following description:
–        Class 3: ‘Toiletries; animal grooming preparations; essential oils and aromatic extracts; grinding preparations; cleaning and fragrancing preparations; tailors’ and cobblers’ wax; cosmetics, other than make-up preparations; skin care preparations; scented oils; scented wood; pomanders [aromatic substances]; scented sachets; scented sachets; perfume water; scented sachets; potpourris [fragrances]; fragrance preparations; scented linen sprays; scented ceramic stones; scented pine cones; geraniol; ionone [perfumery]; fumigation preparations [perfumes]; potpourris [fragrances]; perfumes for cardboard; air fragrancing preparations; aromatics for fragrances; perfumery and fragrances; cologne impregnated disposable wipes; sachets for perfuming linen; perfumed soaps; cushions impregnated with fragrant substances; cushions filled with fragrant substances; fragrance emitting wicks for room fragrance; fragrances for personal use; scented oils used to produce aromas when heated’;
–        Class 4: ‘Fuel and lighting devices; perfumed candles; aromatherapy fragrance candles; additives in connection with the aforesaid goods, included in this class’;
–        Class 5: ‘Pharmaceutical preparations for skin care; nutritional supplements’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2018/219 of 19 November 2018.
5        On 19 February 2019, the applicant, Laboratorios Ern, SA, filed a notice of opposition, pursuant to Article 46 of Regulation 2017/1001, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier word mark APIRETAL covering, inter alia, pharmaceutical preparations in Class 5.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation 2017/1001.
8        Following a request made by the intervener and in accordance with Article 47(2) of Regulation 2017/1001, EUIPO invited the applicant to furnish proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the prescribed period.
9        On 27 May 2020, the Opposition Division rejected the opposition. In essence, after finding that genuine use of the earlier mark had been established only for ‘antipyretic pharmaceutical preparations’, it found that there was no likelihood of confusion and that the applicant had not established the reputation of the earlier mark.
10      On 27 July 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By decision of 25 March 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, first of all, it found that genuine use of the earlier mark had been established for ‘antipyretic pharmaceutical preparations’ as a subcategory of ‘pharmaceutical preparations’. Next, the Board of Appeal found that those goods were dissimilar to the goods in Classes 3 and 4 covered by the mark applied for and that they had a low degree of similarity with the goods in Class 5 covered by the mark applied for. It held that the signs at issue had a low degree of visual and phonetic similarity and that the conceptual comparison was neutral. Carrying out a global assessment in so far as the marks at issue covered goods in Class 5, the Board of Appeal found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It also excluded such a likelihood of confusion in so far as the mark applied for covered goods in Classes 3 and 4 on the ground that those goods were dissimilar to the ‘antipyretic pharmaceutical preparations’ covered by the earlier mark. Lastly, it rejected the opposition brought on the basis of Article 8(5) of that regulation, on the ground that there was no proof of the reputation of the earlier mark.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        refuse the application for registration of the mark applied for in respect of all the goods covered;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      The applicant relies on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 8(5) of that regulation.
15      As a preliminary point, it should be noted that the applicant does not dispute that genuine use of the earlier mark has been proved only in so far as it covers ‘antipyretic pharmaceutical preparations’ and that, therefore, pursuant to Article 47(2) of Regulation 2017/1001, for the purposes of the examination of the opposition, that mark is deemed to be registered in respect only of that part of the goods.
Admissibility of documents produced for the first time before the Court
16      The applicant produced, in Annexes 8 and 9 to the application, first, a report drawn up on 24 May 2021 by a market research company concerning the reputation of the earlier mark in so far as it designates a medicinal product for paediatric use principally used for its antipyretic action and, secondly, an affidavit from its managing director, dated 1 June 2021, attesting to the accuracy of all the information relating to the earlier mark in the file.
17      EUIPO and the intervener submit that those annexes, drawn up after the contested decision, have been submitted for the first time before the Court and are therefore inadmissible.
18      In that regard, the purpose of actions before the General Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v
OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
19      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v
OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
20      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.
21      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. 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).
22      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
23      In the contested decision, the Board of Appeal stated that, since the earlier mark is an EU trade mark, it was necessary to take into account the consumers in the European Union. It also found that the relevant public consisted of the general public and of professionals in the medical field.  There is no reason to call into question that definition of the relevant public, which, moreover, is not disputed by the applicant.
The comparison of the goods
24      In assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
25      In the present case, the applicant, referring to the Opposition Division’s decision, states that the goods at issue are identical or similar in view of the ‘connections’ between them and the fact that they are ‘so close related goods’.
26      In that regard, it must be observed that the Opposition Division did not carry out a comparison of the goods at issue. After noting that some of the contested goods were identical or similar to ‘antipyretic pharmaceutical preparations’, it ruled out the existence of a likelihood of confusion following a global assessment based on the assumption, accepted for reasons of procedural economy, that the goods at issue were identical. Consequently, the applicant cannot draw any conclusions from the Opposition Division’s decision concerning the degree of similarity of those goods.
27      The Board of Appeal, by contrast, did compare the goods at issue. First, as regards the goods in Classes 3 and 4 covered by the mark applied for, the Board of Appeal concluded that they were dissimilar to the ‘antipyretic pharmaceutical preparations’ covered by the earlier mark in relation to their intended purpose, nature and method of use and that those goods were neither complementary nor in competition with each other. Although, for some of the goods in Class 3, the distribution channels could be identical, such a circumstance was insufficient, according to the Board of Appeal, to render the goods at issue similar.
28      Secondly, as regards the goods in Class 5 covered by the mark applied for, the Board of Appeal found, in essence, that, even though they coincided in their general medical purpose and distribution channels, the ‘pharmaceutical preparations for skin care’ covered by the mark applied for and the ‘antipyretic pharmaceutical preparations’ covered by the earlier mark were similar only to a low degree since their specific therapeutic indications, their natures and their methods of use were different and they were neither complementary nor in competition with each other. As regards the ‘nutritional supplements’ covered by the mark applied for, the Board of Appeal noted that they were not pharmaceutical products by nature and that they could be used independently
of any medical treatment, unlike ‘antipyretic pharmaceutical preparations’. It also found that they were neither complementary nor in competition with each other. The Board of Appeal inferred from this that those goods were similar to a low degree.
29      It must be stated that the applicant merely makes a general assertion that the goods at issue are identical or similar without basing that assertion on any argument capable of casting doubt on the evidence on which the Board of Appeal based its finding, such as the intended purpose, nature and method of use of those goods, or their lack of complementarity or competition. Such an assertion is insufficient to invalidate the Board of Appeal’s assessment, which does not appear to result from an incorrect application of the criteria referred to in paragraph 24 above to the goods at issue.
The comparison of the signs
30      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
31      The Board of Appeal found that, visually, the signs at issue coincided in their first three letters ‘a’, ‘p’ and ‘i’ and their last two letters, ‘a’ and ‘l’, and that they differed on account of the presence, in the earlier mark, of the additional letters ‘r’, ‘e’ and ‘t’. Thus, the mark applied for was not included as a whole in the earlier mark and the length of the signs at issue was strikingly different. The Board of Appeal inferred from this that those signs produced a different overall impression and, therefore, that they had a low degree of similarity. Phonetically, the Board of Appeal found that the pronunciation of the signs at issue coincided in the first two syllables and the last part of the last syllable. By contrast, their pronunciation differed in the sequence of the additional letters ‘r’, ‘e’ and ‘t’ present in the middle of the earlier mark, the number of syllables (three as opposed to four) and the sequence of vowels, which resulted in those signs having a low degree of similarity. Conceptually, the Board of Appeal found that the comparison was neutral since neither of the signs at issue had any meaning.
32      The applicant disputes the assessments made by the Board of Appeal in the visual and phonetic comparisons of the signs at issue. It submits that they have a high degree of similarity.
33      As regards the visual comparison, it should be noted that the signs at issue consist of five and eight letters respectively, which distinguishes them significantly in terms of length. Although it is true that the earlier mark contains all the letters of the mark applied for, the applicant is not justified in claiming that the mark applied for is reproduced in the earlier mark. In the earlier mark, the letters ‘r’, ‘e’ and ‘t’ are placed between the first three letters ‘a’, ‘p’ and ‘i’ and the last two letters ‘a’ and ‘l’ of which the mark applied for consists, with the result that the mark applied for does not appear in the earlier mark.
34      As regards the phonetic comparison, it should be noted that the signs at issue coincide in the first two syllables ‘a’ and ‘pi’ and differ in so far as the mark applied for consists of a third syllable ‘al’ whereas the earlier mark continues with the syllables ‘re’ and ‘tal’. The number of syllables and their structure linked, in particular, to the sequence of two vowels in the mark applied for therefore militate against the identity of the first two syllables of the signs at issue and the ‘al’ at the end of those signs.
35      In the light of those factors, it must be held that the Board of Appeal did not make an error of assessment in finding that there was a low degree of visual and phonetic similarity between the signs at issue.
36      The Board of Appeal decisions relied on by the applicant cannot invalidate such a finding. The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65). In any event, it should be noted that the decisions relied on by the applicant concern situations in which the signs at issue coincide in three syllables, which is not the case here, and where the additional syllable of one of the signs has been assessed as, in essence, rather inconspicuously placed.
The likelihood of confusion
37      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
38      In the present case, first, the Board of Appeal found that there was no likelihood of confusion in so far as the mark applied for covered goods in Classes 3 and 4 on the ground that they were dissimilar to the ‘antipyretic pharmaceutical preparations’ covered by the earlier mark. Since the Board of Appeal correctly found that there was no similarity between those goods, one of the conditions laid down in Article 8(1)(b) of Regulation 2017/1001 is not satisfied. Accordingly, the applicant is not justified in disputing the rejection of the opposition in so far as the mark applied for covers goods in Classes
3 and 4.
39      Secondly, the Board of Appeal found that there was no likelihood of confusion in so far as the mark applied for covered goods in Class 5, as a result of a
global assessment taking into account the low degree of similarity between the goods covered, the low degree of visual and phonetic similarity between the signs at issue, the lack of any relevant conceptual similarity and the increased attention level of consumers since the goods at issue in Class 5 affect human health. The Board of Appeal
held that that finding remained valid, even taking into account the enhanced distinctiveness of the earlier mark.
40      The applicant disputes the assessment thus carried out by the Board of Appeal, claiming, in essence, a high degree of similarity between the signs at issue, a similarity between the goods at issue and an enhanced distinctiveness of the earlier mark in so far as it covers ‘antipyretic pharmaceutical preparations’.
41      At the outset, it should be noted that the applicant does not dispute the Board of Appeal’s finding that the relevant public, whether the general public or medical professionals, will display a high level of attention since the goods at issue in Class 5 affect human health, a finding which there is no need to call into question.
42      Furthermore, it has been held that the Board of Appeal had been correct in finding that there was a low degree of similarity between the signs at issue, on the one hand, and between the goods in Class 5 covered by the mark applied for and ‘the antipyretic pharmaceutical preparations’ covered by the earlier mark, on the other.
43      It is true that, since the more distinctive the mark, the greater the likelihood of confusion, marks with a highly distinctive character, inter alia, because of the public’s recognition of those marks, enjoy broader protection than marks with a 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). However, in view of the low degree of similarity both between the signs at issue and between the goods covered in Class 5 and the high level of attention of the relevant public, the Board of Appeal was correct to find that, even taking into account the enhanced distinctiveness of the earlier mark, the existence of a likelihood of confusion had to be ruled out.
44      It follows that the first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected as unfounded.
The second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
45      Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services in respect of which it is applied for are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
46      In order for an earlier mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied.
First, the earlier mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier mark or that it might be detrimental to the distinctive character or the repute of the earlier mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35; see, also, judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
47      In the present case, the Board of Appeal rejected the opposition in so far as it was based on Article 8(5) of Regulation 2017/1001 on the ground that the applicant had not demonstrated that the earlier mark enjoyed a reputation. In the same way as the Opposition Division, the Board of Appeal found that, although the evidence produced suggested that the earlier mark, in so far as it covered ‘antipyretic pharmaceutical preparations’, enjoyed a certain awareness on the Spanish market, it was insufficient to establish the reputation of that mark in view, inter alia, of the age of some the evidence, namely a market research report dated
2 November 2010 and a certificate of the Barcelona Chamber of Commerce dated
26 November 2010. The Board of Appeal also observed that the applicant had not contested before it the Opposition Division’s findings to that effect.
48      The applicant submits that the earlier mark has a significant reputation in Spain and that the relevant public might associate the marks at issue, with the use of the mark applied for then taking advantage of, or being detrimental to, the distinctive character or reputation of that earlier mark.
49      As regards the condition relating to the reputation of the earlier mark, first of all, it must be borne in mind that the report drawn up on 24 May 2021 by a market research company and the affidavit from the applicant’s managing director dated 1 June 2021, produced in Annexes 8 and 9 to the application and on which the applicant relies in order to establish the reputation of the earlier mark, are inadmissible (see paragraph 19 above).
50      Next, it should be stated that the reputation of an earlier mark must be established as at the date of filing of the application for the contested mark (judgment of 5 October 2020, Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraph 112). Documents earlier than that date cannot
be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. It cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 104 and the case-law cited; see also, by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31).
51      In the present case, the reputation of the earlier mark had to be established as at
20 September 2018. In the proceedings, the applicant merely asserts that the considerable reputation of the earlier mark to cover ‘antipyretic pharmaceutical preparations’ is reflected in the sales achieved and in the significant investment carried out in advertising, without explaining how the Board of Appeal’s assessment concerning the lack of proof of reputation is incorrect.
52      More specifically, the applicant does not show how the market research report and the certificate of the Barcelona Chamber of Commerce
dating from 2010, referred to in paragraph 47 above, were sufficient to establish the existence of the earlier mark’s reputation as at
20 September 2018, that is to say, eight years later. Nor does the applicant identify the evidence produced before the adjudicating bodies of EUIPO which might show that the reputation of the earlier mark, as evidenced by those documents, continued to exist on that date. In particular, it does not submit any argument designed to challenge the Opposition Division’s assessment, confirmed by the Board of Appeal, that, although the invoices issued between 10 January 2014 and 19 July 2018 showed intensive use of the earlier mark for ‘antipyretic pharmaceutical preparations’, they were insufficient to demonstrate that the situation established by the 2010 evidence was still valid as at
20 September 2018, in the absence of any evidence submitted by the applicant relating in particular to the market share held by that mark or to the amounts invested in promoting it.
53      Lastly, the applicant relies on the decision of 19 November 2018 (Case R 1725/2017-4) in which the Board of Appeal, confirming the position adopted by the Opposition Division in its decision of 29 June 2017 (Case B 2 619 347), found that the earlier mark had a reputation in so far as it covered ‘antipyretic pharmaceutical preparations’. In the decision of the Board of Appeal, which was confirmed by the Court in the judgment of 5 October 2020, apiheal (T‑51/19, not published, EU:T:2020:468), the earlier mark was recognised as having a reputation as at
27 January 2015. The Board of Appeal based its finding on the market research report and the certificate of the Barcelona Chamber of Commerce dating from 2010, referred to in paragraph 47 above, after observing that, although it was true that those documents related to a period almost five years prior to 27 January 2015, it was possible to take the view that the reputation of the earlier mark continued to exist on that date in the light of the more recent evidence produced before it, namely a large number of invoices and the content of website extracts.
54      It should be noted that, before the Opposition Division, the applicant relied on the Opposition Division’s decision of 29 June 2017. The Opposition Division had found that there was no need to decide in the same way since the Opposition Division’s decision was more than three years old. Before the Board of Appeal, the applicant did not produce any additional document or even dispute the Opposition Division’s findings in that regard.
55      It is true that, in the opposition proceedings which gave rise to the abovementioned decision of 19 November 2018, the adjudicating bodies of EUIPO accepted that the earlier mark had a reputation as at
27 July 2015 on the basis, inter alia, of the same documents dating from 2010 as those produced by the applicant in the present proceedings. However, that fact alone did not mean that the same finding
had to be adopted in the present case, having regard, in particular, to the period of eight years which elapsed between the date of the abovementioned documents and the date on which the reputation of the earlier mark has to be established.
56      It follows that the applicant is not justified in claiming that the Board of Appeal made an error of assessment in finding that proof of reputation of the earlier mark had not been adduced.
57      Accordingly, since one of the conditions laid down in Article 8(5) of Regulation 2017/1001 is not fulfilled, the applicant’s arguments seeking to establish that the relevant public might associate the marks at issue and that the use of the mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark are ineffective and must be rejected on that ground.
58      It follows from the foregoing that the second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001, must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the plea of inadmissibility raised by EUIPO with regard to the head of claim in the application seeking refusal of the application for registration.
Costs
59      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.
60      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laboratorios Ern, SA to pay the costs.
Marcoulli
Frimodt Nielsen
Iliopoulos
Delivered in open court in Luxembourg on 16 March 2022.
E. Coulon
M. van der Woude
Registrar
President
* Language of the case: English.