JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark EMCURE — Earlier EU and national word marks EMCUR — Relative ground for refusal — Similarity of the goods and services — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑165/17,
Emcur Gesundheitsmittel aus Bad Ems GmbH, established in Bad Ems (Germany), represented by K. Bröcker, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Emcure Pharmaceuticals Ltd, established in Bhosari (India),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 December 2016 (Case R 790/2016-2), concerning opposition proceedings between Emcur Gesundheitsmittel aus Bad Ems and Emcure Pharmaceuticals,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 March 2017,
having regard to the response lodged at the Court Registry on 6 June 2017,
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 31 October 2013 Emcure Pharmaceuticals Ltd filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign EMCURE.
3        The services in respect of which registration was sought are in Classes 35, 41, 42, 44 and 45 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 35: ‘Organisation of exhibitions, trade fairs, seminars and other events for commercial or advertising purposes, all the aforesaid services being in the field of healthcare; Demonstration of goods; Dissemination of advertising matter, Presentation of goods on communication media, for retail purposes; Distribution of samples’;
–        Class 41: ‘Providing of training and education in pharmaceutical and medical fields including via the Internet, audio-visual productions; Entertainment; Sporting and cultural activities; Organising and arranging of workshops, forums, lectures, conferences, competitions and seminars; arranging of trade fairs, exhibitions and other events for educational purpose; publication of magazines, journals including journals online, books including electronic books, guides and databases in the medical and pharmaceutical field; Exhibition for cultural & educational purposes in the field of healthcare; Conducting and organising workshops; Provision of health club facilities’;
–        Class 42: ‘Chemical research; chemical analysis; biological and pharmaceutical research; hosting of computer sites; Bacteriological research; Biological research; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware, software and databases’;
–        Class 44: ‘Medical services; pharmacy advice; dentistry; healthcare services; veterinary services; veterinary assistance’;
–        Class 45: ‘Welfare and empowerment of persons with disability, social awareness; campaigning to spread social awareness; charity services’.
4        The application was published in European Union Trade Marks Bulletin No 54/2014 of 21 March 2014.
5        On 21 May 2014 the applicant, Emcur Gesundheitsmittel aus Bad Ems GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6        The opposition was based on the following earlier marks:
–        the EU word mark EMCUR, registered on 13 December 2002 under number 1 962 232, covering, inter alia, goods in Classes 5 and 10 corresponding, for each of those classes, to the following description:
–        Class 5: ‘Salt and products containing salt(s) for medical use’;
–        Class 10: ‘Nasal douches’.
–        the German word mark EMCUR, registered on 21 December 2012 under number 30 2012 046 049, covering, inter alia, goods in Class 5 and corresponding to the following description:
–        Class 5: ‘Pharmaceutical products, except pharmacy-only preparations against cardiovascular diseases, immunotherapeutic agents, cytokines and cancer-inhibiting substances (cytostatics and metastasis inhibitors); veterinary products, phytopharma, medicinal teas, preparations for health care, dietetic substances for medical purposes and food supplements’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 9 March 2016 the Opposition Division upheld the opposition in part and rejected registration of the mark applied for in respect of ‘pharmacy advice’ services in Class 44, on the basis that there was a likelihood of confusion with regard to the earlier German mark. By contrast, the mark applied for was allowed to proceed to registration in respect of all the other services covered by that mark. The Opposition Division considered that the other services covered by the mark applied for were not similar to the goods covered by the earlier marks and thus that one of the conditions for the application of Article 8(1)(b) of Regulation No 207/2009 had not been satisfied.
9        On 27 April 2016 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision in so far as it had rejected the opposition.
10      By decision of 13 December 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First, the Board noted that the relevant territory is Germany since, in its view, the applicant confined its appeal before the Board to the part of the Opposition Division’s decision concerning the opposition based on the earlier German mark. Secondly, the Board took the view that, on the one hand, as regards the goods covered by the earlier German mark, the relevant public consists of the general public and healthcare professionals in Germany and that, on the other hand, as regards the services covered by the mark applied for, the relevant public ranges from professionals to the general public, depending on the particular service in question. In that regard, the Board of Appeal stated that both professionals and the general public have a high degree of attention. Thirdly, it considered the signs at issue to be visually and phonetically highly similar and their conceptual comparison to be neutral. Fourthly, the Board took the view that the goods and services in question are not similar. Fifthly, the Board found that since one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not satisfied in the present case, there was no likelihood of confusion on the part of the relevant public, despite the similarity of the signs at issue.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision rejecting the appeal and consequently the opposition;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It submits that the goods covered by the earlier marks and the services in Classes 35, 41, 42 and 44 covered by the mark applied for are similar, in particular because they are complementary. It thus argues that, by virtue of the principle of interdependence, the low degree of similarity between the goods and services is offset by the high degree of similarity between the signs at issue. According to the applicant, there is therefore a risk that the relevant public may consider that the signs at issue belong to the same undertaking or, in any event, to economically-linked undertakings.
14      EUIPO disputes the applicant’s arguments.
15      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because 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.
16      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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).
17      In the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, account should be taken of the average consumer of the category of goods or services 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, to that effect, 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).
18      The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see judgment of 15 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 37 and the case-law cited).
19      It has also been previously held that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
20      Consequently, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, it remains necessary, even where the marks at issue are identical, to adduce evidence of similarity between the goods or services covered by them (judgment of 22 June 2011, Mundipharma v OHIM — Asociación Farmaceuticos Mundi (FARMA MUNDI FARMACEUTICOS MUNDI), T‑76/09, not published, EU:T:2011:298, paragraph 22).
21      The applicant’s single plea in law must be examined in the light of the principles set out above.
22      As a preliminary point, as is apparent from paragraphs 8 and 9 above, it should be noted that ‘pharmacy advice’ services are no longer a subject of the proceedings. Furthermore, it should be noted that the Board of Appeal erred in finding, in paragraph 24 of the contested decision, that the applicant had not contested the part of the Opposition Division’s decision based on the earlier EU mark and had confined its appeal before the Board of Appeal to the part of the Opposition Division’s decision that rejected the opposition based solely on the earlier German mark. In that regard, it is apparent from EUIPO’s file that, in the document of 8 July 2016, submitted to EUIPO in order to set out the reasons for its action for annulment of the Opposition Division’s decision, the applicant did not confine its appeal to only one part of that decision, nor did it base that appeal on only one of the earlier marks. Thus, the applicant did not base its opposition to the registration of the earlier mark solely on the earlier German mark but has relied, both before the Board of Appeal and before the Court, on the two earlier marks referred to in paragraph 6 above.
23      In that regard, it is true that the Board of Appeal found that there was no likelihood of confusion solely on the basis that there was no similarity between the goods covered by the earlier German mark and the services covered by the mark applied for, without ruling on whether those services and the goods covered by the earlier EU mark were similar. However, as the goods covered by the earlier German mark include the goods covered by the earlier EU mark, only if the Court had found an error on the part of the Board of Appeal in its finding that the goods covered by the earlier German mark were not similar to the services covered by the mark applied for might that error possibly have an effect on the legality of the contested decision.
24      In the first place, as regards the Board of Appeal’s finding, in paragraph 25 of the contested decision, that the relevant territory is Germany, which is not disputed by the applicant, it should be recalled that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
25      In the second place, the findings, made in paragraph 29 of the contested decision, which, moreover, are not disputed by the applicant, that the relevant public, as regards the goods covered by the earlier German mark, consists of the general public and professionals in Germany, do not contain any errors and must be endorsed. As regards the services covered by the mark applied for, the Board of Appeal took the view that the relevant public ranges from professionals to the general public, depending on the particular service in question. Since those findings are not disputed and do not contain any errors, they must be endorsed. Similarly, the Board of Appeal’s findings, in paragraph 30 of the contested decision, which are also not disputed by the applicant, that the level of attention of each of those two categories of the relevant public is high, must be endorsed.
26      In the third place, it is not disputed that, as the Board of Appeal found in paragraph 28 of the contested decision, the word mark applied for, EMCURE, is highly similar to the earlier German word mark EMCUR.
27      In view of the case-law cited in paragraphs 19 and 20 above, it should be made clear that only when it is established that there is no similarity between the goods and services covered by the signs at issue can it be excluded that a likelihood of confusion between those signs exists, without there being any need to carry out a global assessment, taking into account all relevant factors, of the perception the relevant public has of the signs and of the goods or services at issue.
28      Accordingly, it is necessary to determine whether the Board of Appeal correctly excluded any likelihood of confusion on the part of the relevant public based solely on the finding that there was no similarity between the goods covered by the earlier German mark and the services covered by the mark applied for.
Comparison of the goods and services covered by the signs at issue
29      In assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services must be taken into account. Those factors include, in particular, their nature, their intended purpose, 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 (judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37).
30      As regards, more specifically, whether the goods and services are complementary, it must be borne in mind that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or providing those services. Thus, when determining whether goods and services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22 and the case-law cited).
31      Before examining the merits of the Board of Appeal’s findings regarding each class of services covered by the mark applied for, it is, first, necessary to reject the applicant’s argument that the assessment of the existence of a likelihood of confusion on the part of the relevant public is the starting point of an analysis seeking to establish whether the goods and services at issue are similar. It is apparent from both Article 8(1)(b) of Regulation No 207/2009 and the settled case-law which has interpreted and applied that provision that the finding that there is a likelihood of confusion, within the meaning of that provision, is the final result of an assessment into whether several conditions are satisfied, including the condition relating to the similarity of the goods and services covered by the signs at issue (order of 9 March 2007, Alecansan v OHIM, C‑196/06 P, not published, EU:C:2007:159, paragraphs 26 and 38; see also judgment of 7 February 2006, Alecansan v OHIM — CompUSA (COMP USA), T‑202/03, not published, EU:T:2006:44, paragraphs 25 and 35 and the case-law cited).
32      Second, it is necessary to reject the applicant’s argument that the Board of Appeal misinterpreted the principles established by the case-law relating to the assessment of the similarity between the goods and services at issue and erred in finding that they were not complementary, that they had a low level of similarity and that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. According to the applicant, it is apparent from the case-law that, by reason of their very nature, goods are generally different from services. However, again according to the applicant, it nevertheless remains the case that they can be complementary in the sense that, for example, the maintenance of the goods may complement the goods themselves or that the services may have the same purpose or use as the goods. In that regard, the applicant makes reference to the judgment of 18 December 2008, Les Éditions Albert René v OHIM (C‑16/06 P, EU:C:2008:739).
33      However, it is not apparent from an examination of the contested decision that, when assessing the similarity of the goods covered by the earlier German mark and the services covered by the mark applied for, the Board of Appeal misinterpreted the principles established by the case-law referred to by the applicant, which is moreover consistent with the case-law referred to in paragraphs 29 and 30 above. In paragraphs 33 to 39 of the contested decision, the Board of Appeal not only took account of the different nature of the goods and services at issue but also undertook a comparison of those goods and services on the basis of various relevant factors, including whether they were complementary.
34      Consequently, the issue to be decided in the present case is whether the Board of Appeal was correct to find that there is no similarity between the goods covered by the earlier German mark and the services covered by the mark applied for after taking account of the various factors as indicated by the case-law and set out in paragraphs 29 and 30 above. If there was no error on the part of the Board of Appeal with regard to ruling out any similarity between the goods covered by the earlier German mark and the services covered by the mark applied for, that necessarily implies that there is no similarity between the goods covered by the earlier EU mark and the services covered by the mark applied for, given that those goods are included in the wider categories of goods covered by the earlier German mark.
The services in Classes 35 and 41
35      The applicant submits that ‘pharmaceutical products’ and ‘preparations for healthcare’ covered by the earlier marks are the subject of the services in Class 35 covered by the mark applied for, namely ‘organisation of exhibitions, trade fairs, seminars and other events for commercial or advertising purposes all the aforesaid services being in the field of health care’. According to the applicant, the target consumers for the goods and services at issue are not generally distinct due to the fact that, although it must be accepted that the services in Class 35 are aimed at undertakings, in particular pharmaceutical companies, healthcare organisations and patient associations, the contacts within the administration of companies and that the recipients of the services are qualified medical professionals, doctors, members of the general public as representatives of the patients or patients themselves. The applicant points out that those persons organise and attend exhibitions, trade fairs and seminars in the field of healthcare in order to get information on pharmaceutical products. The applicant accordingly argues that the target consumers will think, for example, that a seminar held in the field of healthcare under the name EMCURE is closely connected to, or even be about, a preparation for healthcare or pharmaceutical product with the almost identical name EMCUR, even if the advertising services are different. Lastly, the applicant argues that trade fairs and seminars in the field of healthcare seek to provide information concerning particular diseases or disorders and their corresponding prevention and treatment and concludes that the services covered by the mark applied for and the goods covered by the earlier marks are at the very least complementary.
36      As regards the services in Class 41, the applicant argues that ‘pharmaceutical products, medical teas, preparations for healthcare, dietetic substances for medical purposes’ covered by the earlier marks are the subject of the services covered by the mark applied for in Class 41, namely ‘providing of training and education in pharmaceutical and medical field; publication of magazines, journals including journals online, books including electronic books, guides and databases in the medical and pharmaceutical field; exhibition for cultural and educational purposes in the field of health care; conducting and organising workshops; provision of health club facilities’. According to the applicant, it is plain that training courses or magazines in the pharmaceutical field will relate to pharmaceutical products and how such products are applied and will describe their benefits, side effects, etc. The applicant points out that if, as the Board of Appeal argues, the purpose of training services is to expand the knowledge and understanding of healthcare students, it has to be concluded that this consequently leads expanding capabilities in treating the disorders in question. The applicant observes that, in workshops, students learn how to use pharmaceutical products and preparations for healthcare and argues that, although a training course is not a substitute for the pharmaceutical product, it is nevertheless an additional service providing deeper knowledge and an in-depth examination of the pharmaceutical product. The applicant therefore concludes that it is very likely that consumers will consider that training courses in the pharmaceutical field offered under the name EMCURE are linked to the pharmaceutical product EMCUR.
37      The Board of Appeal found, as is apparent from paragraph 33 of the contested decision, that a service which entails the organisation or running of an event such as a trade fair, workshop or seminar, even if such an event relates to the healthcare field, cannot be regarded as being similar to a pharmaceutical product. In that regard, the Board found, first, that the services at issue are aimed at corporate bodies, such as pharmaceutical companies, healthcare organisations, private and governmental organisations and patient associations, whereas the applicant’s pharmaceutical products are, in general, aimed at individual doctors and the general public. Secondly, according to the Board of Appeal, the goods and services at issue are different both in their nature, one being tangible and the other being intangible, and in their purpose, one being used for the treatment of diseases and disorders and the other being used for commercial, promotional and advertising purposes. Thirdly, the goods and services at issue are neither in competition with each other nor are they complementary due to the fact that a trade fair or another similar event cannot be regarded as a reasonable alternative to a medical preparation. Fourthly, the distribution channels of the goods and services at issue are utterly distinct, pharmaceutical products being available in pharmacies or in specialised healthcare outlets and seminars and workshops taking place in universities or public forums.
38      As regards, more specifically, the services in Class 41, the Board of Appeal stated, first of all, in paragraph 36 of the contested decision, that training services seek to expand the knowledge and understanding of healthcare students, while the purpose of pharmaceuticals is to treat health disorders. The Board stressed that a training course or a similar service is not a substitute for a pharmaceutical product or vice versa. Furthermore, a training course cannot take place in a pharmacy, the place where pharmaceutical goods are sold. Next, in paragraph 37 of the contested decision, the Board of Appeal added that publication services are aimed at individuals who wish to disseminate their work in written or electronic form and that, although such works may be limited to the subject of healthcare, they cannot be confused with their end product, such as a magazine or a book (which would be in Class 16 or in Class 9 if in electronic form). Lastly, in paragraph 38 of the contested decision, the Board of Appeal stated that the health club facilities covered by the mark applied for ‘are far removed from a pharmaceutical [product]’. Such services do not dispense medicines, are not found in a pharmacy, generally do not offer pharmaceutical or medical services and are not in competition with or complementary to pharmacies since taking medicine does not require participation in health club services or vice versa.
39      In the first place, as regards the public which must be taken into account in the comparison of the goods and services at issue, it is apparent from the case-law cited in paragraph 18 above that that public should be users who are likely to use both the goods covered by the earlier marks and the services covered by the mark applied for. In so far as both the goods covered by the earlier marks and the services in Classes 35 and 41 covered by the mark applied for are used by professionals, it must be found that the relevant public overlaps to some extent.
40      In the second place, it should be noted that the applicant does not dispute that the services in Classes 35 and 41 covered by the mark applied for and the goods covered by the earlier German mark have a different nature and purpose, as the Board of Appeal found in paragraphs 33, 36 and 37 of the contested decision. The applicant also does not put forward any specific criticism concerning the Board of Appeal’s finding that the distribution channels of the goods covered by the earlier German mark and the services in Classes 35 and 41 covered by the mark applied for are different, nor has the applicant called into question the Board of Appeal’s finding that those services and those goods are not in competition. Those findings, which are free of error, must be upheld.
41      In the third place, as regards the assessment of whether there is a complementary connection between the goods covered by the earlier marks and the services covered by the mark applied for, it should be noted that, as the applicant correctly argued, the goods covered by the earlier marks can be the subject of the services covered by the mark applied for. In the context of a trade fair or other similar advertising services, such as ‘seminars and other events for commercial or advertising purposes all the aforesaid services being in the field of health care; Demonstration of goods; Dissemination of advertising matter, Presentation of goods on communication media, for retail purposes; Distribution of samples’, the relevant public may obtain, for example, samples of the pharmaceutical products in question or even information on those products. As the applicant pointed out, seminars and workshops in the field of healthcare, as well as training services, may relate to the therapeutic or side effects of pharmaceutical products, their features, their manufacturing process or their use. However, the fact that the services in question have pharmaceutical products as their subject is not sufficient ground to recognise a complementary connection between those goods and those services for the purposes of the case-law referred to in paragraph 30 above. The use of pharmaceutical products is not indispensable or important to the provision of services for the organisation of an event such as a trade fair, a workshop, a seminar or training services. Conversely, providing those services is not indispensable or important for the use of those pharmaceutical products.
42      As regards, in particular, publication services in Class 41, although those services may have the purpose of disseminating information on pharmaceutical products and the manufacturing process or therapeutic effects of those products, that is again not sufficient ground in the present case to recognise a complementary connection between those services and those pharmaceutical products for the purposes of the case-law referred to in paragraph 30 above. The use of a pharmaceutical product is not indispensable or important for providing a publication service in the pharmaceutical and medical field. Conversely, providing a publication service is not indispensable or important for the use of a pharmaceutical product. Moreover, as the Board of Appeal correctly pointed out, publication services should not be confused with the final product, namely a journal, a magazine or an e-publication, as the applicant pointed out when it stated that ‘magazines in the pharmaceutical field will cover as topics pharmaceutical products and how such products will be applied’ in order to argue that the goods and services at issue are complementary.
43      As regards ‘health club facilities’ in Class 41, as the applicant submitted, pharmaceutical products, medicinal teas, preparations for healthcare and dietetic substances for medical purposes, covered by the earlier German mark, may be the subject of those services in that they may be made available as part of those services. However, as the Board of Appeal correctly stated in paragraph 38 of the contested decision, taking medicine for the treatment of a condition does not require participation in health club services. The same applies to medicinal teas, preparations for healthcare and dietetic substances for medical purposes, covered by the earlier German mark. Similarly, the provision of services related to ‘health club facilities’ is not indispensable or important for the use of those goods. It follows that the goods and services at issue are not complementary.
44      Since the applicant confines itself to arguing that the Board of Appeal should have recognised that the goods and services at issue are complementary, and since it has been established that those goods and services were not complementary, the Board of Appeal was right to find that there is no similarity between the services in Classes 35 and 41 covered by the mark applied for and the goods covered by the earlier German mark.
The services in Class 42
45      The applicant submits that ‘pharmaceutical products’, covered by the earlier marks, are the subject of services in Class 42 which are covered by the mark applied for, namely ‘chemical research; chemical analysis; biological and pharmaceutical research; bacteriological research; biological research; scientific and technological services and research’. According to the applicant, there is a clear link between those goods and services given that it is necessary to carry out pharmaceutical research before launching a pharmaceutical product. It argues that consumers will therefore come to the conclusion that pharmaceutical research carried out under the name EMCURE is connected to a pharmaceutical product under the name EMCUR and to a laboratory which manufactures that pharmaceutical product. In that regard, it makes reference, by way of example, to participants in a pharmaceutical study who test medicines which are not yet licensed. The applicant points out that the relevant public which buys pharmaceutical products and the relevant public which participates in research could be the same. The applicant makes it clear that pharmaceutical laboratories are heavily involved in research and development activities and they also provide those services to third parties when promoting and administering pharmaceutical studies for consumers or undertaking research and development activities in cooperation with third parties. Moreover, pharmaceutical laboratories advertise the fact that they continuously improve their products through research and development activities and through innovation. The applicant therefore takes the view that the services in Class 42 covered by the mark applied for and the complementary goods covered by the earlier marks are similar.
46      In paragraph 39 of the contested decision, the Board of Appeal took the view that the goods covered by the earlier German mark and the services in Class 42 covered by the mark applied for are dissimilar. In that regard, it referred to the EUIPO Guidelines (in the version of 23 March 2016) from which it is apparent that ‘although pharmaceutical companies are heavily involved in research and development activities, they usually do not provide such services to third parties. Consequently, Class 5 goods are generally dissimilar to all services covered by Class 42’.
47      In the first place, it should be noted that the Board of Appeal did not find that the goods and services at issue were aimed at a different public. However, EUIPO submits that the ‘target consumers’ for the services in question are ‘clearly different’ from the consumers who buy pharmaceutical products. In that regard, it should be noted that as professionals can be both users of the services at issue and users of pharmaceutical products, the relevant public overlaps to some extent.
48      In the second place, the Board of Appeal’s finding in paragraph 39 of the contested decision, that the goods covered by the earlier German mark and the services in Class 42 covered by the mark applied for are different, a finding that is not disputed by the parties and is free of error, must be upheld.
49      In the third place, as regards the assessment of whether the goods and services at issue are complementary, it should be noted that, as the applicant correctly submitted, pharmaceutical companies are involved in research and development activities. Those companies advertise, inter alia, the fact that, due to their research and development activities and innovation, they continuously improve their products. The fact that pharmaceutical companies do not generally provide those services to third parties does not preclude them from doing so and does not rule out the possibility that the relevant public may believe that the responsibility for the research services lies with the same company which manufactures the pharmaceutical products or even that a company offering the services in question is economically-linked to the company manufacturing those products. Moreover, as the applicant submits, without being challenged on this point by EUIPO, pharmaceutical companies promote and administer pharmaceutical studies for consumers and undertake research and development activities in cooperation with third parties.
50      It is apparent from the foregoing that the services in Class 42 are closely connected to pharmaceutical products. It follows that the relevant public is likely to believe that the same undertaking is responsible for providing those services and manufacturing those goods.
51      That is consistent with the case-law to the effect that research services in Class 42 and pharmaceutical products, veterinary products, preparations for healthcare and dietetic substances for medical purposes in Class 5 are similar due to the close connection between them (see, to that effect, judgment of 18 October 2007, AMS v OHIM — American Medical Systems (AMS Advanced Medical Services), T‑425/03, EU:T:2007:311, paragraphs 65 and 66).
52      That analysis cannot be called into question by relying on the EUIPO Guidelines, which can neither take priority over the provisions of Regulation No 207/2009 nor indeed influence the interpretation of those provisions by the Courts of the European Union. On the contrary, those guidelines are designed to be read in accordance with the provisions of that regulation (see judgment of 16 December 2015, Perfetti Van Melle Benelux v OHIM — Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 81 and the case-law cited).
53      The Board of Appeal therefore erred in finding that the goods in Class 5 covered by the earlier German mark and the services in Class 42 covered by the mark applied for were not similar.
The services in Class 44
54      The applicant submits that ‘pharmaceutical products, veterinary products, preparations for healthcare, dietetic substances for medical purposes and food supplements’ in Class 5 and ‘nasal douches’ in Class 10 covered by the earlier marks are the subject of the services covered by the mark applied for in Class 44, namely ‘Medical services; Pharmacy advice; Dentistry; Healthcare services; veterinary services; veterinary assistance’. According to the applicant, the goods and services mentioned above are complementary since medical services generally use pharmaceutical products when those services are offered. It points out that those findings are particularly obvious in the case of a veterinarian providing veterinary services and veterinary assistance and administering medication when medically treating animals. The target consumers will therefore come to the conclusion that veterinary services offered under the name EMCURE are linked to veterinary products under the name EMCUR. Similarly, the applicant submits that the food supplements covered by the earlier marks are sold in pharmacies which also offer healthcare services and that nasal douches covered by the earlier EU mark are sold in pharmacies which provide healthcare services and advice. The applicant points out that medical services can often include the administration of medicines, especially in hospitals, by emergency doctors and by emergency medical services. Thus, the services in Class 44 covered by the mark applied for and the goods covered by the earlier marks are aimed at the same public, use the same distribution channels and must therefore be regarded as similar.
55      In paragraph 39 of the contested decision, the Board of Appeal states that the goods covered by the earlier German mark and the services in Class 44 covered by the mark applied for are not similar by pointing out that, in the EUIPO Guidelines (in their version of 23 March 2016), it is indicated that ‘[the Guidelines also find] dissimilarity when comparing pharmaceutical preparations and medical (including veterinary) services in Class 44’. The Board of Appeal notes that it is clear from those guidelines that ‘even though a certain link cannot be denied due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities’. According to those guidelines, ‘the relevant public does not expect a doctor to develop and market a drug’. The Board of Appeal takes the view that those guidelines are not wrong on that point and notes that the manufacturer of a pharmaceutical product sold under a particular trade mark does not usually provide ‘medical services’ under the same name. Moreover, ‘medical services’ are not provided in a chemist or pharmacy. Similarly, a medical centre does not normally provide a pharmacy outlet. Lastly, the goods and services at issue are different in nature, one of them being tangible and the other being intangible.
56      In the first place, it should be noted that, contrary to what EUIPO argues, the applicant’s claim that the goods and services at issue target the same consumer was not denied by either the Board of Appeal or by the Opposition Division (see the thirteenth and fourteenth indents of paragraph 10 of the contested decision). Medical services and pharmaceutical products are aimed at and are used by both professionals and the general public. Accordingly, it must be found that those goods and services are aimed at the same consumers.
57      In the second place, first, the parties do not dispute that the goods covered by the earlier German mark and the services in question are different. Second, it is common ground that the goods and services at issue pursue the same aim of treating diseases.
58      By contrast, the applicant disputes, in essence, the Board of Appeal’s findings that those goods and services do not have the same distribution channels.
59      In that regard, it should be noted that the Board of Appeal merely stated that ‘the manufacturer of a pharmaceutical sold under a particular trade mark does not usually provide “medical services” under the same name. “Medical services” are not provided in a chemist or pharmacy; nor does a medical centre normally provide a pharmacy outlet’. However, as the applicant correctly argues, in hospitals, medical services often include administering medicines. Furthermore, it cannot be ruled out, as the applicant submitted, that food supplements may be sold in pharmacies which offer healthcare services and advice. Similarly, it must be admitted that veterinary services include administering veterinary products. In addition, dentistry services may provide preparations for healthcare and also pharmaceutical products. Accordingly, the goods and services at issue can share the same distribution channels.
60      In the third place, as regards the assessment made by the Board of Appeal that the goods and services at issue are not complementary, it should be noted that, as the applicant correctly argued, the goods in question may be the subject of the services in Class 44 covered by the mark applied for to the extent that those services are important, even indispensable, for the use of those goods. Similarly, administering pharmaceutical products is important, even indispensable, in providing the services in question. It follows that, if the pharmaceutical products under the name EMCUR were to be distributed in the context of services in Class 44 provided under the name EMCURE, the relevant public would be likely to believe that the same undertaking is responsible for manufacturing those goods and providing those services.
61      In light of the foregoing, and in so far as the pharmaceutical products covered by the earlier marks and the services in Class 44 covered by the mark applied for are aimed at the same public, pursue the same aim, can share the same distribution channels and are complementary, the Board of Appeal erred in finding that the services in Class 44 and the goods covered by the earlier German mark were not similar.
62      Such a finding is consistent with the case-law which accepted that ‘pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, material for dental fillings and dental impressions’ in Class 5 and ‘medical and veterinary services’ in Class 44 are similar (judgment of 26 March 2015, Radecki v OHIM — Vamed (AKTIVAMED), T‑551/13, not published, EU:T:2015:191, paragraph 35). Furthermore, it has previously been held that medical services in Class 44 are complementary to pharmaceutical products in Class 5 (judgment of 2 June 2010, Procaps v OHIM — Biofarma (PROCAPS), T‑35/09, not published, EU:T:2010:220, paragraphs 43 to 45). They are therefore connected to those goods by some degree of similarity (see judgment of 3 June 2015, Pensa Pharma v OHIM — Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 134 and the case-law cited).
63      The conclusion set out in paragraph 61 above cannot be called into question by relying on the EUIPO Guidelines, which can neither take priority over the provisions of Regulation No 207/2009 nor indeed influence the interpretation of those provisions by the Courts of the European Union. On the contrary, those guidelines are designed to be read in accordance with the provisions of that regulation (see judgment of 16 December 2015, TRIDENT PURE, T‑491/13, not published, EU:T:2015:979, paragraph 81 and the case-law cited).
The services in Class 45
64      The applicant seeks the annulment of the contested decision in its entirety. However, it does not put forward any argument to challenge the legality of the contested decision in so far as it concerns services in Class 45.
65      Accordingly, the Court cannot uphold the application for annulment of the contested decision in so far as it concerns those services.
Findings on the comparison between the goods and services covered by the signs at issue and on the legality of the contested decision
66      In view of the findings set out in paragraph 44 above, it must be held that the Board of Appeal did not err in finding that there was no similarity between the services in Classes 35 and 41 covered by the mark applied for and the goods in Class 5 covered by the earlier German mark and, for that reason alone, found that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public. The lack of similarity between the goods covered by the earlier German mark and the services in Classes 35 and 41 covered by the mark applied for implies that there is necessarily no similarity, and accordingly no likelihood of confusion, as regards those services and the goods covered by the earlier EU mark, which are included in the wider categories of goods covered by the earlier German mark.
67      However, in view of the findings set out in paragraph 52 and 61 above, the Board of Appeal erred in finding that there was no similarity between the services in Classes 42 and 44 covered by the mark applied for and the goods in Class 5 covered by the earlier German mark. Thus, the Board of Appeal also erred in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the part of the relevant public solely on the basis of the incorrect finding that, for those goods and services, the condition based on the existence of a similarity was not satisfied.
68      In the light of the foregoing, the contested decision must be annulled in so far as it concerns the services in Classes 42 and 44 covered by the mark applied for. The action is dismissed as to the remainder.
Costs
69      Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
70      Since EUIPO and the applicant have succeeded on some and failed on other heads, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office of 13 December 2016 (Case R 790/2016-2) in so far as it concerns the services in Classes 42 and 44 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;
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO and Emcur Gesundheitsmittel aus Bad Ems GmbH to bear their own costs.
Gervasoni
Madise
Da Silva Passos
Delivered in open court in Luxembourg on 14 June 2018.
E. Coulon
A. M. Collins
Registrar
President
Table of contents
Background to the dispute
Forms of order sought
Law
Comparison of the goods and services covered by the signs at issue
The services in Classes 35 and 41
The services in Class 42
The services in Class 44
The services in Class 45
Findings on the comparison between the goods and services covered by the signs at issue and on the legality of the contested decision
Costs
*      Language of the case: English.