Provisional text
JUDGMENT OF THE GENERAL COURT (Third Chamber)
24 January 2017 (*)
(EU trade mark — Opposition proceedings — Application for the EU word mark Diacor — Earlier national figurative mark Diacol PORTUGAL — Genuine use of the earlier mark — Article 43(2) and (3) of Regulation (EC) No 40/94 (now Article 42(2) and (3) of Regulation (EC) No 207/2009) — Evidence in a language other than the language of the proceedings — Rule 22(4) of Regulation (EC) No 2868/95 (now Rule 22(6) of Regulation No 2868/95, as amended) — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009))
In Case T‑258/08,
Matthias Rath, residing in Cape Town (South Africa), represented by U. Vogt, C. Kleiner and S. Ziegler, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Portela &amp; Ca., SA, established in São Mamede do Coronado (Portugal),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 30 April 2008 (Case R 1630/2006-2), relating to opposition proceedings between Portela & Ca. and Mr Rath,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 June 2008,
having regard to the response lodged at the Court Registry on 2 October 2008,
having regard to the orders of 4 March 2009, 3 March 2010, 1 March 2011, 17 February 2012, 5 March 2013, 24 February 2014 and 16 March 2015 staying the proceedings,
having regard to the decision of 19 February 2016 to stay the proceedings,
having regard to the change in the composition of the Chambers of the Court,
having regard to the written question put to the parties by the Court on 13 October 2016,
having regard to the observations lodged at the Court Registry on 27 October and 10 November 2016,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written part of the procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral part of the procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, applicable to the present case pursuant to Article 227(7) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 26 November 1997, the applicant, Mr Matthias Rath, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).
2        Registration as a mark was sought for the word sign Diacor.
3        The goods in respect of which registration was sought are in, inter alia, Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Food supplements, dietetic supplements, vitamins, minerals’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 76/1999 of 27 September 1999.
5        On 27 December 1999, Portela & Ca., SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier Portuguese figurative mark:
7        That mark was registered on 27 July 1936 under the number 137 311 for ‘products of Class 79’ in accordance with the national classification of goods in force at the time.
8        The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009) and Article 8(5) of that regulation (now Article 8(5) of Regulation No 207/2009).
9        On 7 November 2006, the Opposition Division partially upheld the opposition and rejected the application for registration in respect of all the goods in Class 5. In particular, it found that the opposition was admissible, that Portela & Ca. had proved that it had put the earlier mark to genuine use and that there was a likelihood of confusion between the marks at issue.
10      On 12 December 2006, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
11      By decision of 30 April 2008 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found that, first, the opponent had furnished proof of genuine use of the earlier mark in respect of ‘antitussive medicines’ (paragraphs 42 to 47 of the contested decision), secondly, the relevant public consisted of average consumers in Portugal who were relatively attentive when purchasing the goods at issue (paragraph 59 of the contested decision), thirdly, there was only a low degree of similarity between the goods at issue (paragraphs 49 and 50 of the contested decision), fourthly, the signs at issue were highly similar visually and phonetically whereas it was not possible to compare them conceptually (paragraphs 51 to 55 of the contested decision) and fifthly, there was, on the whole, a likelihood of confusion between the marks at issue on the part of the relevant public (paragraphs 59 to 61 of the contested decision).
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of the action, the applicant relies on three pleas in law. The first alleges infringement of Rule 22(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). The second alleges infringement of Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009). The third alleges infringement of Article 8(1)(b) of Regulation No 40/94.
15      It should be noted at the outset that Regulation No 40/94 was repealed and replaced by Regulation No 207/2009, which came into force on 13 April 2009. However, in view of the time at which the events occurred, the present dispute continues to be governed by Regulation No 40/94, at least as regards provisions which are not strictly procedural (see judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 2 and the case-law cited).
The first plea, alleging infringement of Rule 22(4) of Regulation No 2868/95
16      By his first plea, alleging infringement of Rule 22(4) of Regulation No 2868/95, the applicant submits, in essence, that the Board of Appeal did not have the right to base its decision on evidence of use submitted by the opponent which had not been translated into the language of the proceedings before EUIPO, namely English. According to the applicant, although it is true that some parts of the documents which the opponent had submitted as proof of use could be understood, the fact remains that the other parts of those documents were also important for the purposes of understanding and assessing the proof of use.
17      EUIPO disputes the applicant’s arguments.
18      It should be noted at the outset that Rule 22(4) of Regulation No 2868/95, in its version prior to its amendment by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), which was applicable at the time when the other party to the proceedings before the Board of Appeal had to submit the proof of use of the earlier mark, contained provisions which were in essence identical to those that are now set out in Rule 22(6) of Regulation No 2868/95, as amended.
19      It must also be borne in mind that, according to Rule 22(4) of Regulation No 2868/95, EUIPO is able to request, of a party which has submitted documents as proof of use that have not been submitted in the language of the proceedings, a translation of those documents (judgments of 27 September 2012, El Corte Inglés v OHIM — Pucci International (Emidio Tucci), T‑373/09, not published, EU:T:2012:500, paragraph 24, and of 13 February 2015, Husky CZ v OHIM — Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 56).
20      In the present case, the Board of Appeal found, in paragraphs 46 and 47 of the contested decision, that it was clear from Rule 22(4) of Regulation No 2868/95 that the opponent was not obliged to submit translations of the evidence in Portuguese into the language of the proceedings before EUIPO, namely English, and that all the relevant information in that evidence could safely be understood by any person with a knowledge of English.
21      It is true, as the applicant correctly states, that it is, in principle, necessary for him to be able to understand the content of the evidence of use submitted by the opponent. However, in order to be able actually to exercise his rights of defence with regard to that evidence, it is not necessary for the applicant to be able to understand fully all the details in that evidence. It is sufficient, in that regard, for a person who has a knowledge of the language of the proceedings before EUIPO to be able to identify and understand the relevant information in the documents submitted as proof of use.
22      In the present case, it must be pointed out that, in its letter of 22 September 2004, the opponent described, in English, the documents which it had provided as proof of use of the earlier mark in an annex to that letter and briefly stated the evidential value which it attached to those documents.
23      In particular, in the first place, inasmuch as the applicant is of the opinion that it is necessary to know what is stated with regard to ‘Diacol’ in the ‘Simposium Terapêutico — Encyclopédia de Especialidades Farmacêuticas Portuguesas’, it must be borne in mind that, in its letter of 22 September 2004, the opponent had stated, in English, that what was involved were extracts from six publications entitled ‘Encyclopaedia of Portuguese Pharmaceutical Specialities’ regarding the years 1994 to 1999, in which it was stated that the product ‘Diacol’ was being commercialised on a regular basis on the Portuguese market. Furthermore, as EUIPO correctly submits, it is unequivocally evident from those extracts that those publications describe the composition of a pharmaceutical product bearing the name of Diacol in technical terms which are very similar in a number of European languages, inter alia English and Portuguese. On the whole, the applicant was therefore in a position to understand that the extracts came from an encyclopaedia listing pharmaceutical products marketed on the Portuguese market and that a product named Diacol had been referred to in the six editions corresponding to the five years preceding the date of publication of the EU trade mark application, namely the period from 27 September 1994 to 26 September 1999 (‘the relevant period’) (see paragraph 37 below).
24      In that context, inasmuch as the applicant appears to have doubts as regards whether it is actually apparent from those extracts that the opponent’s goods were marketed under the name Diacol, it is sufficient, in any event, to bear in mind that, pursuant to Article 15(3) of Regulation No 40/94 (now Article 15(2) of Regulation No 207/2009), use of an EU trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor and that it is apparent from the case-law that, where the proprietor of an EU trade mark maintains that use of that mark by a third party constitutes genuine use of that mark he is, for the purposes of Article 15(3) of Regulation No 40/94, claiming implicitly that that use was made with his consent (see judgment of 13 January 2011, Park v OHIM — Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 62 and the case-law cited).
25      In the second place, the applicant takes the view that it is necessary to understand the details of an agreement entitled ‘Contrato de Distribuicão’ and of the invoices submitted by the opponent. The applicant maintains that only a translation of the agreement would enable him to check whether there was really a distribution of the opponent’s goods by the company S. He maintains that the agreement constitutes the basis for the invoices issued by the opponent.
26      In that regard, it must be pointed out that, in its letter of 22 September 2004, the opponent had stated, in English, that the annexes included a distribution agreement concerning the product ‘Diacol’, which it had concluded with the company S., and also an agreement revoking that distribution agreement. As EUIPO correctly submits, a person with a knowledge of English should as a matter of course be able to check that the two agreements actually have the subject matters referred to. Furthermore, EUIPO is also right in observing that the agreements were accompanied by a significant number of invoices from which a person with a knowledge of English could easily deduce that the opponent had, throughout the relevant period (see paragraph 37 below), sold a significant number of items, including items named Diacol, to the company S. and in observing that, under such circumstances, the applicant did not need full translations of the agreements or the invoices in order to enable him to assess that evidence.
27      In the third place, inasmuch as the applicant maintains that full translations of the other documents submitted by the opponent were necessary in order to enable him to assess their content, it is sufficient to point out that he does not substantiate that argument and in no way explains to what extent the Board of Appeal’s assessment in paragraph 47 of the contested decision, according to which such a full translation was not necessary in the present case, is incorrect.
28      It follows that the Board of Appeal cannot be criticised for finding that the evidence of use of the earlier mark submitted by the opponent was sufficiently comprehensible to a person with a knowledge of the language of the proceedings before EUIPO, namely English, with the result that EUIPO could refrain, in the present case, from requesting that the opponent submit full translations of that evidence. Consequently, the first plea, alleging infringement of Rule 22(4) of Regulation No 2868/95, must be rejected.
The second plea, alleging infringement of Article 43(2) and (3) of Regulation No 40/94
29      By his second plea, alleging infringement of Article 43(2) and (3) of Regulation No 40/94, the applicant submits that the Board of Appeal erred in finding that the other party to the proceedings before the Board of Appeal had furnished proof of genuine use of the earlier mark.
30      EUIPO disputes the applicant’s arguments.
31      Under Article 43(2) and (3) of Regulation No 40/94, an opposition must be rejected if, following a request by the applicant for registration of an EU trade mark, the proprietor of an earlier national trade mark who has given notice of opposition does not furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier national trade mark has been put to genuine use in the Member State in which the earlier national trade mark is protected in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier national trade mark has at that date been registered for not less than five years. If the earlier national trade mark has been used in relation to part only of the goods or services for which it is registered it must, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
32      In the present case, the earlier mark is registered in respect of ‘products of Class 79’ for the purposes of the Portuguese national classification of goods in force at the time when it was registered on 27 July 1936. According to the information which the Board of Appeal obtained from the Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property, Portugal), information which the applicant does not dispute, at the time when the earlier mark was registered, Class 79 for the purposes of the Portuguese national classification covered ‘pharmaceutical products, bandage materials, disinfectants and veterinary products’ and the registration of a Portuguese national mark in respect of ‘products of Class 79’ for the purposes of that Portuguese national classification covered all those goods (paragraph 34 of the contested decision).
33      However, it is common ground that the evidence of use submitted by the opponent relates exclusively to the marketing of a single pharmaceutical product, namely that of an antitussive medicinal product named Diacol.
34      According to the case-law, it follows from Article 43(2) and (3) of Regulation No 40/94 that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgments of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 45, and, of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 23).
35      Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories (judgments of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 24).
36      Given that ‘antitussive medicines’ constitute a sufficiently precise and coherent subcategory of ‘pharmaceutical products’, in so far as that definition of subcategory is based on the therapeutic indication and therefore on the purpose and intended use of the goods in question (see, by analogy, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraphs 30 and 35), the Board of Appeal was right in finding, in paragraph 45 of the contested decision, that the opponent had, in any event, provided evidence only in relation to ‘antitussive medicines’. To the extent that the evidence provided by the opponent proved genuine use of the earlier mark as regards ‘antitussive medicines’, it follows from Article 43(2) and (3) of Regulation No 40/94 that, for the purposes of the examination of the opposition, the earlier mark would be deemed to be registered only in respect of those ‘antitussive medicines’.
37      In the present case, the Board of Appeal found, in paragraphs 42 to 45 of the contested decision, that the evidence submitted by the opponent proved genuine use of the earlier mark in Portugal during the relevant period.
38      In that regard, the Board of Appeal cannot be criticised for having relied on evidence regarding a product named Diacol and not on the earlier figurative mark as such. It is apparent from the case-law that, under Article 15(2)(a) of Regulation No 40/94 (now point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009) in conjunction with Article 43(2) and (3) of Regulation No 40/94, proof of genuine use of an earlier trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited). As the word element ‘diacol’ in the earlier mark is its most distinctive element (see paragraph 58 below), it follows that the use of that word element constitutes use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered.
39      In the first place, the applicant submits that the documents which the opponent submitted as being extracts from certain publications of IMS Health do not provide any proof relating to the use of the earlier mark. In that regard, it must be stated, as observed by EUIPO, that the Board of Appeal did not, in paragraphs 42 to 47 of the contested decision, take those documents as its basis for concluding that the opponent had proved genuine use of the earlier mark. The applicant’s argument regarding those documents is therefore ineffective. In any event, inasmuch as the applicant seems to doubt that the documents submitted by the opponent are actually extracts from the publication entitled ‘IMS Health’ which relate, in essence, to the relevant period and refer expressly to the product ‘Diacol’, it must be pointed out, as EUIPO also observes, that it is not stated in those documents that they come from a publication of IMS Health. However, the fact remains that the documents contain lists detailing the sales volumes in respect of a number of products, including those in respect of a product named Diacol, during various parts of the relevant period. Accordingly, notwithstanding the uncertainty as regards their precise source, it cannot a priori be ruled out that those documents have at least some evidential value as regards the sales volumes to which they refer and it was therefore for the applicant further to substantiate the reasons why he takes the view that the Board of Appeal should have rejected them as evidence.
40      In the second place, the applicant submits that the extracts from the ‘Simposium Terapêutico — Encyclopédia de Especialidades Farmacêuticas Portuguesas’ regarding the years 1994 to 1999 do not constitute evidence of use of the earlier mark. As EUIPO correctly explains, the mere fact that a pharmaceutical product appears year after year in an encyclopaedia listing pharmaceutical products marketed on the Portuguese market does not it itself prove that the mark affixed to that product has been put to genuine use in Portugal. However, it may be inferred from that fact that a product named Diacol was regularly marketed in the years 1994 to 1999, which constitutes an indication of some use of that mark on the Portuguese market. Consequently, even though the fact that a product bearing the name Diacol was referred to throughout the relevant period in an encyclopaedia listing pharmaceutical products marketed on the Portuguese market does not in itself prove that the mark which that product bears was put to genuine use in Portugal during the relevant period, the fact remains that it may be an indication of such genuine use, in particular where there is additional evidence as in the present case.
41      In the third place, according to the applicant, there is nothing to indicate that the two leaflets submitted by the opponent have actually been used. Furthermore, he submits that the mark used in those leaflets differs substantially from the earlier mark, in particular inasmuch as the letter ‘a’ is not recognisable as a letter. In that regard, it must again be stated, as observed by EUIPO, that the Board of Appeal did not, in paragraphs 42 to 47 of the contested decision, take those leaflets as its basis for concluding that the opponent had proved genuine use of the earlier mark. The applicant’s arguments regarding those leaflets are therefore ineffective.
42      Since the applicant’s arguments are not therefore capable of being upheld, it must be held that, on the whole, the Board of Appeal was right in finding, in paragraphs 43 to 45 of the contested decision, that, first, the reference year after year throughout the relevant period to a product named Diacol in the ‘Simposium Terapêutico — Encyclopédia de Especialidades Farmacêuticas Portuguesas’ and, secondly, the invoices regarding the rather significant volumes of sales of a product bearing the name Diacol by the opponent to the company S., in performance of a distribution agreement throughout the relevant period, proved that the opponent had marketed a pharmaceutical product under the name Diacol in Portugal throughout the relevant period and that it had therefore made genuine use of the earlier mark in relation to ‘antitussive medicines’.
43      Consequently, the applicant’s second plea, alleging infringement of Article 43(2) and (3) of Regulation No 40/94, must be rejected.
The third plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94
44      By its third plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94, the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue.
45      EUIPO disputes the applicant’s arguments and maintains that the Board of Appeal was right in finding that there was a likelihood of confusion between the marks at issue.
46      Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
47      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
48      For the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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).
The relevant public
49      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). The relevant public for the assessment of the likelihood of confusion consists of users who are likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (judgment of 1 July 2008, Apple Computer v OHIM — TKS‑Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23).
50      In the present case, the General Court holds that the Board of Appeal was right in finding, in paragraph 59 of the contested decision, that the level of attention of the relevant public was relatively high as regards both the ‘food supplements, dietetic supplements, vitamins, minerals’ in Class 5 in respect of which the applicant had, inter alia, sought registration of the mark applied for and the ‘antitussive medicines’ in respect of which the earlier mark was protected. All of those goods relate to the health of end consumers (see, to that effect, judgments of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 36 and the case-law cited, and of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 64). Given that the earlier mark is a Portuguese mark, the Board of Appeal was also right in finding that the relevant public was located in Portugal.
The comparison of the goods
51      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should 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 (see 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 and the case-law cited).
52      In the present case, the parties correctly agree on the fact that the Board of Appeal was right in finding, in paragraphs 49 and 50 of the contested decision, that there was only a very low degree of similarity between the goods at issue. The ‘antitussive medicines’ in respect of which the earlier mark is deemed to be registered for the purposes of the examination of the opposition are pharmaceutical products with a specific medical purpose, whereas the ‘food supplements, dietetic supplements, vitamins, minerals’ in Class 5 covered by the mark applied for, although they are often used together with medicines and are used to maintain or recover health, are not specifically pharmaceutical products by nature.
The comparison of the signs
53      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).
54      As regards the visual comparison of the signs at issue, the Board of Appeal found, in paragraph 53 of the contested decision, that, out of the six letters of which the sign applied for consists, five were identically reproduced in the first word element in the earlier mark, namely the letters ‘d’, ‘i’, ‘a’, ‘c’ and ‘o’. The only difference was in the last letters. The additional word element ‘portugal’ in the earlier sign was, according to the Board of Appeal, secondary, in the light of its positioning, size and descriptiveness. The Board of Appeal therefore found that the signs at issue were highly similar visually.
55      It must be pointed out, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
56      Furthermore, it is apparent from the case-law that, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the mark (see judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). It follows that the Board of Appeal cannot be criticised for having based its visual comparison of the signs at issue in the first place on the word elements of the signs at issue. The figurative elements of the earlier sign do not have a form which is so elaborate that it is capable of having a substantial influence on the overall impression created by the earlier sign and thus of rebutting the abovementioned presumption that the word elements of a sign are, in principle, more distinctive than its figurative elements.
57      In addition, EUIPO correctly points out, as a general rule, the public will not consider a descriptive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark (judgment of 27 November 2007, Gateway v OHIM — Fujitsu Siemens Computers (ACTIVY Media Gateway), T‑434/05, not published, EU:T:2007:359, paragraph 47).
58      Given that the second word element, ‘portugal’, in the earlier sign is descriptive of the origin of the goods to which that sign is affixed and, having regard to its size and position in the earlier sign, the Board of Appeal was right in finding that the first word element, ‘diacol’, was the most distinctive element in the earlier sign, as the second word element is merely secondary in relation to the first word element.
59      On the whole, in view of the fact that the most distinctive word element in the earlier sign, namely the word element ‘diacol’, is almost identical to the word element ‘diacor’ of which the sign applied for consists, the Board of Appeal did not err in finding that the signs at issue were highly similar visually.
60      That finding is not called into question by the arguments put forward by the applicant.
61      First, inasmuch as the applicant submits that the word element ‘portugal’ in the earlier sign serves to distinguish the signs at issue from one another visually, it must be borne in mind that that word element is merely secondary in relation to the first word element, ‘diacol’, which is the most distinctive element in the earlier sign. Although it is true that the word element ‘portugal’ cannot be disregarded, the fact remains that, on account of its subsidiary role in the earlier sign, it does not, as the applicant submits, serve to distinguish the signs from one another visually.
62      Secondly, the applicant submits that the word elements ‘diacol’ and ‘diacor’ are markedly different. He maintains that, in such short elements, even a slight difference, such as that between the last letters in the signs, is sufficient to distinguish clearly the signs from one another visually. In the present case, the first word element in the earlier sign, which is its most distinctive element, and the word element of which the sign applied for consists have the same length and their first five letters are identical. Only the last letters in those word elements differ. Accordingly, even if, generally, a difference in a single letter could, in short marks, be regarded as altering the perception of those marks, in the present case the strong similarity between the word elements ‘diacol’ and ‘diacor’ arising out of the fact that the first five letters in those elements are identical overrides the dissimilarity between the last letters in those word elements.
63      As regards the phonetic comparison of the signs at issue, the Board of Appeal found, in paragraph 54 of the contested decision, that, even if the second word element in the earlier sign were pronounced, the pronunciation of the first three syllables in the signs at issue coincided almost totally and that only the last consonants differed. It found that the signs at issue were therefore highly similar phonetically.
64      Inasmuch as the applicant confines himself to stating that, contrary to what the Board of Appeal found, there is no phonetic similarity between the signs at issue, it must be pointed out that his claims are not based on any specific element.
65      In any event, the Board of Appeal was right in pointing out that the pronunciation of the first three syllables in the signs at issue is almost identical. The first two syllables, ‘di’ and ‘a’, correspond perfectly and the third syllables, ‘col’ and ‘cor’, are highly similar phonetically because the beginnings of those syllables, ‘co’, are identical. As regards the word element ‘portugal’ in the earlier sign, it must be held that, on account of its size, its position in the earlier sign and its descriptiveness, it is likely that a substantial part of the relevant public will not pronounce it. On the whole, the phonetic differences between the signs at issue as regards the ending of the third syllables in those signs and the presence of the word element ‘portugal’ in the earlier sign are not capable of offsetting the strong similarity arising out of the first three syllables of the signs at issue. Consequently, the Board of Appeal was entitled to find that the signs at issue were highly similar phonetically.
66      As regards the conceptual comparison between the signs, it must be borne in mind that, according to the case-law, conceptual differences between two signs are capable of counteracting visual and phonetic similarities between them only if at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see, to that effect, judgment of 12 January 2006, Ruiz-Picasso and Others v OHIM, C‑361/04 P, EU:C:2006:25, paragraph 20).
67      In the present case, the parties do not dispute the assessment which the Board of Appeal correctly made, in paragraph 55 of the contested decision, that neither the word element ‘diacol’ in the earlier sign nor the word element ‘diacor’ in the mark applied for has any meaning in Portuguese and that the additional descriptive reference to the country of origin in the earlier sign also does not help to distinguish between the signs at issue.
The likelihood of confusion
68      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).
69      In the present case, the Board of Appeal found, in paragraphs 59 to 61 of the contested decision, that the low degree of similarity between the goods at issue was compensated for by the high degree of visual and phonetic similarity between the signs and that there was therefore a likelihood of confusion on the part of the relevant public, the level of attention of which is high.
70      First of all, inasmuch as the applicant criticises that finding by the Board of Appeal and submits that there is only a very low degree of similarity both between the goods and between the signs at issue and that, in view of the fact that the relevant public is more attentive when purchasing the goods at issue, there is no likelihood of confusion, it must be borne in mind that, contrary to what the applicant claims, the signs at issue are highly similar both visually and phonetically (see paragraphs 59 and 65 above).
71      Moreover, it is apparent from the case-law that, in circumstances such as those in the present case, where there is only a low degree of similarity between the goods at issue and where, in accordance with the case-law cited in paragraph 68 above, it is necessary to ascertain whether that low degree of similarity between the goods at issue may be offset by a high degree of similarity between the signs at issue, the question of whether the earlier mark is distinctive is particularly relevant (see, to that effect, judgments of 22 September 2011, ara v OHIM — Allrounder (A with two triangular motifs), T‑174/10, not published, EU:T:2011:519, paragraph 34; of 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 57; and of 13 May 2015, Deutsche Post v OHIM — PostNL Holding (TPG POST), T‑102/14, not published, EU:T:2015:279, paragraph 67).
72      In the present case, as has been stated in paragraph 67 above, the word element ‘diacol’, which is the most distinctive element in the earlier mark (see paragraph 58 above), does not have any meaning in Portuguese. It follows that the earlier mark has at least a normal distinctive character.
73      Consequently, even though the level of attention of the relevant public appears to be relatively high, it must be held, in the circumstances of the present case, that the degree of similarity between the signs at issue, which must be regarded as high from a visual and phonetic standpoint, is capable of offsetting the low degree of similarity between the goods (see, by analogy, judgment of 11 June 2014, METABIOMAX, T‑281/13, not published, EU:T:2014:440, paragraph 59).
74      In view of the foregoing, the Board of Appeal was right in finding that there was, on the whole, a likelihood of confusion between the marks at issue on the part of the relevant Portuguese public.
75      It follows that the applicant’s third plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94, must be rejected.
76      As none of the pleas in law relied on by the applicant in support of the action is well founded, the action must be dismissed in its entirety.
Costs
77      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. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Matthias Rath to pay the costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 24 January 2017.
E. Coulon
S. Frimodt Nielsen
Registrar
President
* Language of the case: English.