JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
3 May 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark Styriagra — Earlier EU word mark VIAGRA — Taking unfair advantage of the distinctive character or repute of the earlier mark — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))
In Case T‑662/16,
Gall Pharma GmbH, established in Judenburg (Austria), represented initially by D. Reichelt and L. Figura, and subsequently by T. Schafft, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pfizer Inc., established in New York, New York (United States), represented by V. von Bomhard and J. Fuhrmann, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 June 2016 (Case R 724/2015-5), relating to opposition proceedings between Pfizer and Gall Pharma,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, D. Spielmann and Z. Csehi (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 12 September 2016,
having regard to the response of EUIPO lodged at the Court Registry on 27 February 2017,
having regard to the response of the intervener lodged at the Court Registry on 20 February 2017,
further to the hearing on 27 November 2017,
gives the following
Judgment
Background to the dispute
1        On 10 September 2013 the applicant, Gall Pharma GmbH, filed an application for registration of a European Union 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) (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        The mark for which registration was sought is the word sign Styriagra.
3        The goods in respect of which registration was sought are in Class 29 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: ‘Preserved, frozen, dried fruits and vegetables, in particular pumpkin seeds’.
4        The European Union trade mark application was published in the European Union Trade Marks Bulletin No 191/2013 of 8 October 2013.
5        On 20 December 2013, the intervener, Pfizer Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation No 207/2009) against registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6        The opposition was based on the European Union word mark VIAGRA, filed on 19 April 1996 and registered on 21 April 1998 under No 233890, covering goods in Class 5 and corresponding to the following description: ‘pharmaceutical and veterinary preparations and substances’.
7        The grounds put forward in support of the opposition were those set out in Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001).
8        On 5 March 2015, the Opposition Division rejected the opposition.
9        On 13 April 2015, the intervener filed a notice of appeal with EUIPO against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation No 2017/1001).
10      By decision of 13 June 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the appeal and dismissed the trade mark application with respect to all of the goods covered. It based its reasoning on Article 8(5) of Regulation No 207/2009. It held, first, that the signs at issue were similar overall, but to a low degree. Second, it held that the significant reputation of the earlier mark extended not only to consumers of the goods it covered, but also to the whole population of the European Union. However, it considered that the reputation of the earlier mark was limited to pharmaceutical preparations for the treatment of masculine erectile dysfunction and did not extend to foodstuffs and beverages. Third, the Board of Appeal stated that, while the goods covered by the earlier mark were aimed at the adult male population suffering from erectile dysfunction, medical professionals who prescribe those medicinal products and pharmacists, the goods covered by the mark applied for were aimed at average consumers. The Board of Appeal held that the existence of unfair advantage had to be assessed by reference to the average consumers of the goods covered by the mark applied for who might also be consumers of the goods covered by the earlier mark, or who are at least familiar with that earlier mark. Fourth, given the similarity between the marks at issue, the strength of the reputation of the earlier mark and the overlap between the relevant public for the goods at issue, the Board of Appeal held that a connection between the marks at issue, for the purposes of Article 8(5) of Regulation No 207/2009, would be made by consumers, in particular by Austrian consumers. Specifically, it held that although the goods differed in their nature and purpose, certain aphrodisiac effects could be attributed to dried and preserved fruits and vegetables, which might give rise to an association in the mind of the relevant public. Fifth, it held that there was a high probability that use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition;
–        order EUIPO to pay the costs.
12      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant raises a single plea in law, alleging an infringement of Article 8(5) of Regulation No 207/2009.
14      Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
15      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and judgment of 11 July 2007, Mülhens v OHIM — Minoronzoni (TOSCA BLU), T‑150/04, EU:T:2007:214, paragraphs 54 and 55).
16      It should be recalled that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, to that effect, order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 25 and the case-law cited). The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for calls the earlier mark to mind is tantamount to the existence of such a link (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60 and paragraph 2 of the operative part). While, in the absence of such a link in the minds of the public, the use of the trade mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark (see, to that effect and by analogy, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 31, and of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 44), the existence of such a link is not, however, sufficient, in itself, for it to be concluded that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision, has materialised (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27).
17      More specifically, the fourth of the conditions for the application of Article 8(5) of Regulation No 207/2009 referred to in paragraph 15 above refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
18      As regards, lastly, the relevant public to be taken into consideration, it should be pointed out that that public will vary according to the type of injury alleged by the proprietor of the earlier mark (judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 46). The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the mark applied for, must be assessed by reference to average consumers of the goods or services covered by the mark applied for, who are reasonably well informed and reasonably observant and circumspect (see, to that effect and by analogy, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36, and of 7 December 2010, Nute Partecipazioni and La Perla v OHIM — Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), T‑59/08, EU:T:2010:500, paragraph 35).
19      The contested decision must be examined in the light of that case-law.
20      The applicant relies essentially on errors of assessment of the similarity of the marks, the reputation of the earlier mark and of the link between the earlier mark and the mark applied for. It also disputes the existence of a risk of an unfair advantage resulting from the distinctive character or the reputation of the earlier mark.
The similarity of the marks
21      The applicant argues that ‘similarity’ of the marks at issue ‘can be ruled out’, both visually and phonetically.
22      EUIPO and the intervener contest that assessment.
23      In the present case, the Board of Appeal took the view, in essence, that the signs at issue are visually similar to a low extent, phonetically similar to an average degree and that no conceptual comparison can be made. The Board of Appeal concluded that, overall, there is a rather low degree of similarity.
24      In visual terms, the applicant considers that the overall impression, which it claims was overlooked by the Board of Appeal, is substantially influenced by the differences at the beginning of the signs and their length. It takes the view that the beginning of the words has a greater impact than the end.
25      In the present case, the Board of Appeal took the view that the signs are visually similar to a low extent, on the ground that, even though they have five shared letters placed in the same order, namely ‘iagra’, the signs differ perceptibly in their beginnings, namely ‘styr’ and ‘v’, and in their lengths.
26      Although the consumer normally attaches more importance to the beginning of words, that consideration cannot apply in all cases (judgment of 16 May 2007, Trek Bicycle v OHIM — Audi (ALLTREK), T‑158/05, not published, EU:T:2007:143, paragraph 70), and cannot in any case invalidate the principle that the assessment of the similarity of marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 10 December 2008, Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, not published, EU:T:2008:558, paragraph 28 and the case-law cited).
27      It is apparent from paragraph 25 above that the Board of Appeal correctly took into account the overall impression of the signs at issue, in particular the differences between the signs, even those highlighted by the applicant. The Board of Appeal was right to find that, despite the five shared letters, the degree of visual similarity has to be considered low on account of those differences. Therefore, the applicant’s arguments must be rejected.
28      In phonetic terms, the applicant claims, as regards German-speaking areas, that the marks at issue will be pronounced as follows: ‘sty-ri-agra’ and ‘vi-agra’, and therefore, that the marks at issue will no longer have two syllables in common, but only the last syllable ‘agra’. It adds that ‘styria’, in the mark applied for, since it designates the Austrian region of Styria in English or Latin, will be perceived as a distinct word with the suffix ‘gra’. Thus, that does not give ‘i-agra’ in the two marks, but ‘viagra’ in one mark and ‘gra’ in the other. That is particularly true if the element ‘styria’ is disregarded as a purported geographical indication. Furthermore, the initial consonants produce a completely different overall impression. The element ‘agra’ is not, moreover, accented.
29      In the present case, the Board of Appeal considered that, phonetically, the coincidence in the ending of the marks is more perceivable, the earlier mark being pronounced as ‘vi-a-gra’ and the mark applied for ‘sty-ri-a-gra’. It noted that the sequence of letters ‘a-gra’ would be pronounced in an identical manner, irrespective of the language, and that the signs share the last two syllables, which thus makes them similar.
30      First, it is sufficient to note that the number of syllables of which the shared element ‘agra’ is made up is irrelevant and is not capable of invalidating the assertion that the sequence of letters ‘agra’ would be pronounced in an identical manner in both signs, irrespective of the language.
31      Second, the assertion that the public will distinguish in its pronunciation the word ‘styria’, irrespective whether or not it has identified it as designating an Austrian region, and the ending ‘gra’ does not justify omitting from the phonetic comparison a whole element of the mark applied for, even if that element may possibly be distinctive to a low degree, and comparing the earlier mark only with one of the elements of the mark applied for, namely in the present case the element ‘gra’. The possibly weak distinctive character of the element ‘styria’ does not therefore preclude, from a purely phonetic point of view, the public from perceiving a similarity in the ending of the marks, through the shared element ‘agra’, irrespective whether or not that shared element is accented. Moreover, contrary to the applicant’s submission, the Board of Appeal did not fail to take into account the differences between the sounds of the initial consonants ‘st’ and ‘v’ and between ‘styri’ and ‘vi’. The Board simply took the view — correctly — that those phonetic differences at the beginning of the signs are not sufficient to offset the identical sounds at the end and that it should therefore be concluded that there is an average degree of phonetic similarity.
32      Since the conceptual comparison was considered to have no impact on the overall comparison, as both signs have no meaning in any of the languages of the European Union — which the applicant does not dispute — the Board of Appeal did not err in finding that, overall, there is a rather low degree of similarity between the marks.
Reputation of the earlier trade mark
33      First, the applicant relies, in essence, on an error committed with regard to the goods to which the reputation of the earlier mark relates. It points out that the reputation of the earlier mark relates exclusively to a medicinal product which may be prescribed only after a specific medical diagnosis which is intended for a small proportion of the population, that is to say, exclusively adult males with organic erectile dysfunction.
34      Second, the applicant submits that the Board of Appeal used the wrong criterion to define the public whose knowledge of the earlier mark determines the extent of that mark’s reputation and refers in that regard to paragraph 24 of the judgment of 14 September 1999, General Motors (C‑375/97, EU:C:1999:408), according to which, in essence, the public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark. The relevant public for assessing the reputation of the earlier mark is not therefore the general public, but doctors who prescribe it and, indirectly, men suffering from organic erectile dysfunction. The applicant claims that the general public will know of the earlier mark only by hearsay, very imperfectly, and will have incorrect information about the characteristics of the product itself, which is insufficient to establish a reputation or a link between the marks.
35      At the hearing, the applicant disputed, in essence, the reputation of the earlier mark.
36      EUIPO and the intervener dispute that line of argument and note that, both before the Board of Appeal and in its application before the Court, the applicant had acknowledged the reputation of the earlier mark.
37      In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, all the relevant facts of the case must be taken into consideration, in particular the market share held by the earlier mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in promoting the mark, but there is no requirement for that mark to be known by a specific percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see, by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraphs 24, 25, 27 and 29).
38      In the present case, in paragraphs 20 and 21 of the contested decision, the Board of Appeal stated that the finding of the reputation of the earlier mark in respect of ‘pharmaceutical preparations for the treatment of male erectile dysfunction’ in the European Union was not contested by the applicant. In paragraph 32 of the contested decision, the Board considered that the reputation of the earlier mark VIAGRA is significant and includes not only the consumers of the goods covered by that mark, but also extends to the entire population of the European Union, referring in particular to the judgment of 25 January 2012, Viaguara v OHIM — Pfizer (VIAGUARA), (T‑332/10, not published, EU:T:2012:26). It found that it is apparent from the evidence adduced, including sales figures for most of the countries of the European Union for the period 2001-2013, that, due to advertising campaigns and wide press coverage, the earlier mark is not only recognisable by patients suffering from erectile dysfunction, but is also widely known amongst the general public. As regards Austria, the Board relied on a survey from 2008, showing that public awareness of the earlier mark was 90% amongst a sample population of men and women above the age of 18.
39      As a preliminary point, it should be observed that at the hearing, the applicant disputed the reputation of the earlier mark for the first time.
40      In that regard, it is necessary to recall the case-law according to which no new plea in law, complaint or argument may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure (see, to that effect, judgments of 8 October 2008, SGL Carbon v Commission, T‑68/04, EU:T:2008:414, paragraph 48, and of 11 June 2015, McCullough v Cedefop, T‑496/13, not published, EU:T:2015:374, paragraph 76 and the case-law cited).
41      In the present case, this is a new complaint which is not connected with the single plea in law or the other complaints as set out in the application. Such a complaint cannot be regarded as based on matters of law or of fact which came to light in the course of the procedure, since the reputation of the earlier mark was already recognised by the Opposition Division, and the applicant did not challenge that finding before the Board of Appeal, as is apparent from paragraph 21 of the contested decision. Moreover, the applicant did not challenge that finding in its application before the Court. On the contrary, it is mentioned, in paragraph 13 of that application, that ‘[the applicant does not dispute] that the opposing mark enjoys a significant reputation in large parts of the population’.Accordingly, that complaint does not present a sufficiently close connection with the plea or heads of claim initially set out in the application in order to be considered as forming part of the normal evolution of debate in proceedings before the Court (see, to that effect, judgment of 10 May 2016, Izsák and Dabis v Commission, T‑529/13, EU:T:2016:282, paragraphs 32 and 33).
42      It must therefore be rejected as inadmissible.
43      First, contrary to what the applicant claims, the Board of Appeal did indeed limit the reputation of the earlier mark to the goods covered by that mark, in so far as it specified, in paragraph 25 of the contested decision, that the reputation of the earlier mark, although it extends to the entire population of the European Union, nonetheless remains clearly limited to ‘pharmaceutical preparations for the treatment of male erectile dysfunction’ and does not extend to foodstuffs and beverages.
44      Second, as regards an alleged error in the definition of the public whose knowledge of the earlier mark determines the extent of that mark’s reputation, it is clearly apparent from the case-law cited in paragraph 37 above that reputation must be established in respect of a significant part of the public concerned by the goods covered by the earlier mark. That is indeed apparent from the contested decision, in so far as the Board of Appeal found, in paragraph 32 of the contested decision, that the earlier mark had a reputation with consumers of the goods covered by that mark.
45      It must however be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the trade mark application is filed will make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. For the purposes of assessing where there is a link between the marks at issue, it may therefore be necessary to take into account the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53). In the present case, the Board of Appeal found in paragraph 32 of the contested decision that the reputation of the earlier mark is significant and includes not only consumers of the goods covered by that mark, but also extends to the entire population of the European Union. Moreover, it is also apparent from paragraph 28 of the contested decision that the relevant public overlaps, albeit partially, which is not contested by the applicant.Consumers of goods of the mark applied for may also be consumers of the medicinal products covered by the earlier mark, as the Board of Appeal correctly noted.
46      The mere fact, criticised by the applicant, that a substantial part of the population will know of the earlier mark only by hearsay and will not have precise information on the intervener’s goods, since it is not a consumer of them, is irrelevant for the purposes of assessing the reputation of that mark and, therefore, the link between the marks.
47      Accordingly, the Board of Appeal did not err as regards the goods in respect of which the reputation is to be assessed or as regards the relevant public in order to determine the extent of the earlier mark’s reputation.
The link between the marks
48      The applicant claims that, even if the narrow public targeted by the earlier mark also buys foodstuffs in Class 29 covered by the mark applied for, it is however highly unlikely that that public will establish a connection between those marks covering different goods, by reason inter alia of its particular knowledge of the therapeutic characteristics of the medicinal product covered by the earlier mark. Moreover_it submits, in essence, that an average consumer of the general public would not establish such a link either, on account of the differences between the goods covered by the marks at issue. At the hearing, the applicant drew attention to the differences between the present case and that which gave rise to the judgment of the Austrian Supreme Court cited in the contested decision.
49      EUIPO and the intervener dispute those arguments.
50      According to the case-law, there must be a global assessment as to whether there is such a link, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42; of 12 March 2009, Antartica v OHIM, C‑320/07 P, EU:C:2009:146, paragraph 45, and order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26).
51      In the present case, in order to find that the general public would associate the mark applied for with the earlier mark, the Board of Appeal considered, in essence, that, despite the low level of similarity between the marks, the group of letters ‘iagra’, common to both signs, is far from usual for the general public. The Board of Appeal also took into account the earlier mark’s significant reputation with the entire population of the European Union and the fact that the goods covered by the marks at issue are not similar, but that they relate to a public that overlaps in part. In paragraph 37 of the contested decision, the Board found, in essence, that certain aphrodisiac effects can be attributed to the goods of the mark applied for, namely dry and preserved fruits and vegetables, which is capable of making the public associate the marks, despite the differences in the nature and purpose of the goods at issue. Moreover, the Board observed that the association between the marks Styriagra and VIAGRA would be made in particular by Austrian consumers, as is apparent from a judgment of the Austrian Supreme Court of 22 September 2009. According to the Board of Appeal, those consumers will single out the common name, in Latin or English, of the Austrian region Styria and will thus perceive the mark applied for as a combination of ‘styria’ and ‘agra’ or even as a play on words between ‘styria’ and ‘viagra’, on the ground in particular that the goods designated by the mark applied for are marketed as ‘products for love’.
52      First, the argument that doctors and men suffering from erectile dysfunction are not capable of establishing a link between the marks at issue is based on an incorrect premiss regarding the public to be taken into consideration. In accordance with the case-law recalled in paragraph 18 above, the risk that the mark applied for takes unfair advantage of the reputation of the earlier mark is to be assessed with regard to the public of the mark applied for, and not with regard to the public of the earlier mark. Consequently, it is logically in respect of the same public that the prerequisite that the relevant public must make a connection between the earlier mark and the mark applied for must be assessed, even if the connection does not confuse them. The Board of Appeal was therefore correct to ascertain, in the present case, whether, in the mind of the public concerned by the goods of the mark applied for, namely the general public of the European Union, the mark applied for would call to mind the earlier mark.
53      Second, the argument that, on account of the differences between the goods covered by the marks at issue, nobody, not even the general public of the mark applied for, would establish such an association between the signs at issue must also be rejected.
54      In accordance with the case-law recalled in paragraph 50 above, the degree of dissimilarity or closeness of the goods is admittedly one of the criteria to be taken into consideration when assessing the existence of a link between the marks, but it is not the only criterion. Indeed, the Court has already pointed out that Article 8(5) of Regulation No 207/2009 expressly refers to the situation in which the goods or services are not similar (see order of 14 May 2013, You-Q v OHIM, C‑294/12 P, not published, EU:C:2013:300, paragraph 67 and the case-law cited; see also, to that effect, judgment of 25 January 2012, VIAGUARA, T‑332/10, not published, EU:T:2012:26, paragraph 45).
55      It is apparent from the contested decision, in particular from paragraph 37 thereof, that the Board of Appeal found, in essence, and correctly, that, although the goods at issue are not similar, the aphrodisiac properties attributed to certain dry and preserved fruits and vegetables are capable of giving rise to an association between the earlier mark and the mark applied for in the mind of the relevant public, despite the differences in the nature and purpose of the goods covered by the marks at issue. Accordingly, it correctly examined the nature of the goods covered by the marks at issue and the degree of closeness and dissimilarity between them.
56      In that regard, it is not disputed, in the application, that such aphrodisiac effects may be attributed to certain fruits and vegetables by the general public, in particular in the case of pumpkin seeds. The applicant concedes that such rumours are widespread, but submits that they are unfounded. As regards the challenge, for the first time at the hearing, to the existence of such rumours, it is sufficient to note that such an argument is inadmissible since it is out of time, in view of the case-law cited in paragraphs 40 and 41 above.
57      Contrary to the what the applicant claims, even if it is not possible to establish a direct link between the goods covered by the marks at issue, which are dissimilar in their nature and purpose, as the Board of Appeal found, association with the earlier mark nevertheless remains possible, in the light of the similarity, admittedly weak but nonetheless present, of the signs and of the significant reputation acquired by the earlier mark, which extends beyond the relevant public in respect of which it has been registered. Accordingly, even though the relevant sections of the public at whom the marks at issue are directed do not overlap completely, because the goods concerned are different, it is possible to establish that a connection might be made between the marks (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53).
58      Third, as regards the decision of the Austrian Supreme Court mentioned in the contested decision, it should be borne in mind that it is, in principle, permissible for EUIPO and its Boards of Appeal to rely on a national decision as a piece of evidence, if that evidence is such as to prove the facts relied on in the case in point (see, to that effect, judgment of 15 July 2011, Zino Davidoff v OHIM — Kleinakis kai SIA (GOOD LIFE), T‑108/08, EU:T:2011:391, paragraph 23).
59      In the present case, that judgment, which concerns a STYRIAGRA mark and VIAGRA marks, was mentioned, in paragraph 36 of the contested decision, only by way of illustration and for the sake of completeness. In any event, the differences between the Austrian case and the present case highlighted by the applicant, in particular the fact that it does not concern the applicant, that the marks, one of which was figurative, were slightly different from those at issue and that the pumpkin seeds covered by the mark STYRIAGRA were blue sugar-coated seeds, unlike in the case in point, are not capable of calling into question the existence of an association between the marks at issue made by Austrian consumers. As the Board of Appeal correctly observed, the finding of an association between those marks can be made on the basis of the denominations of the marks as such.
60      Accordingly, the Board of Appeal did not err in finding that a link between the marks at issue would be established by consumers.
The risk that the use without due cause of the mark applied for would take unfair advantage of the reputation of the earlier mark
61      The applicant claims that there is absolutely no practice of unfair advantage.
62      EUIPO and the intervener dispute that line of argument.
63      In order to better define the risk referred to in Article 8(5) of Regulation No 207/2009, it must be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin’ (recital 8 of Regulation No 207/2009). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure or youth. In that sense, the trade mark has an intrinsic economic value that is separate and distinct from that of the goods and services for which it is registered. The messages in question conveyed by, or associated with, a reputed mark, give it significant value that warrants protection, and all the more so when, in most cases, the reputation of a mark is a result of the considerable efforts and investments made by its owner. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (see judgment of 25 January 2012, VIAGUARA, T‑332/10, not published, EU:T:2012:26, paragraph 57 and the case-law cited).
64      In order to benefit from the protection introduced by Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must adduce evidence that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate that the type of damage to its mark that is referred to in that provision is actual and present. When it is foreseeable that such injury will ensue from the use which the proprietor of the mark applied for may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 42 and the case-law cited).
65      The advantage arising from the use by a third party of a sign which is similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 49 and 50). In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 40).
66      To accept that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark requires the provision of evidence of an association of the mark applied for with the positive qualities of the identical or similar earlier mark which could give rise to manifest exploitation or free-riding by the mark applied for (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 39).
67      In order to determine whether the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the reputation and the degree of distinctive character of the earlier mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned (see judgment of 14 December 2012, Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 38 and the case-law cited).
68      Moreover, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it for the purposes of Article 8(5) of Regulation No 40/94 (see judgment of 10 May 2007, Antartica v OHIM — Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 57 and the case-law cited).
69      The contested decision must be examined in the light of that case-law.
70      In the present case, the Board of Appeal found that the reputation of the earlier mark is significant and extends to the general population, and that the marks at issue are similar to a low degree overall. It then noted that the earlier mark, which enjoys a reputation for pharmaceutical preparations for the treatment of male erectile dysfunction, could see its image of improving sexual potency transferred to the applicant’s goods, despite the clear difference between the goods covered by the two marks. The Board stated that the relevant public could thus be induced to purchase dried fruit or pumpkin seeds by association with the earlier mark, which would give it the impression that those goods are capable of improving sex life. The Board of Appeal added that it is very likely that Austrian consumers would associate the mark Styriagra with the mark VIAGRA and would be encouraged to purchase the goods covered by it in the expectation that they would be like a natural viagra for them. The Board of Appeal concluded that there is a high probability that use of the mark applied for would take unfair advantage of the well-established reputation of the earlier mark.
71      It is therefore apparent from the contested decision that the Board of Appeal correctly took into account all the relevant factors for the purposes of the case-law cited in paragraph 67 above.
72      First, the applicant submits that the fact that, in its range and under other marks there are food supplements intended to stimulate the libido, does not mean that the foodstuffs included under the mark applied for are sold for such a purpose. Nor can any such conclusion be drawn from Annex 7 produced by the intervener before EUIPO. Under the heading ‘Produkte für Liebe’ (‘products for love’), on the applicant’s website, there are no goods which contain or are based on preserved, frozen, dried and cooked fruits and vegetables, specifically pumpkin seeds and, a fortiori, there are no goods designated by the Styriagra trade mark.
73      In that regard, it must be held that, as particular marketing strategies may vary over time depending on the wishes of the proprietors of those marks, and correspond to their commercial intentions, real or supposed, which are inherently subjective, they must not be taken into account when assessing the existence of the risk that the use without due cause of the trade mark applied for would take unfair advantage of the distinctive character or the repute of the earlier trade mark, within the meaning of Article 8(5) of Regulation No 207/2009. Moreover, in accordance with the case-law cited in paragraph 64 above, the proprietor of the earlier trade mark is not required to demonstrate that the type of damage to its mark is actual and present. In that regard, it should be noted that, although the Board of Appeal did indeed refer to evidence relating to the particular marketing strategies for the applicant’s goods, in paragraphs 34 and 45 of the contested decision, this was only for the sake of completeness, in order to support its initial reasoning. Accordingly, even if they are well founded, the applicant’s arguments alleging errors of fact regarding the manner in which its goods are marketed, including its challenging of the intervener’s annexes before EUIPO, are ineffective and must be rejected.
74      Second, the applicant claims that none of the goods designated by the mark applied for has an effect on either sexual performance or libido. More specifically, first, as regards pumpkin seeds, the idea that they have the effect of boosting potency or libido is a widespread misconception and, second, their preventive effect on prostate disease, which has not been sufficiently proven by scientific data, has nothing in common with the treatment of organic erectile dysfunction. Therefore, no average consumer who is reasonably well informed and reasonably observant and circumspect would transfer the characteristics of prescription medication for the treatment of organic erectile dysfunction, marketed under the earlier mark, to a herbal preparation intended, at most, to be a preventive treatment for prostate disease.
75      The question of the veracity of the alleged aphrodisiac properties of some of the goods in Class 29 covered by the mark applied for, or even the question whether those goods can procure the same benefit as the medicinal product for the treatment of erectile dysfunction covered by the earlier mark, is irrelevant. What matters is that the general public with an average degree of attention will be inclined to purchase them thinking that it will find similar qualities, such as an image of improving sex life, owing to the transfer of positive associations projected by the image of the earlier mark (see, to that effect and by analogy, judgment of 25 January 2012, VIAGUARA, T‑332/10, not published, EU:T:2012:26, paragraph 67). For the same reasons, the applicant’s other arguments, relating to the distinction between libido disorders and organic erectile dysfunction, are not relevant either and must also be rejected.
76      Third, with regard to the public in respect of which the risk of unfair advantage must be determined, the applicant claims that the very specific public targeted by the goods of the earlier mark, because it is aware of the medical characteristics of those goods, will not transfer the image of the earlier mark to the mark applied for.
77      That line of argument must also be rejected in so far as it is with regard to the public of the mark applied for that the risk that the image of the earlier mark will be transferred to the mark applied for must be assessed (see paragraphs 18 and 51 above).
78      Fourth, as regards the transfer of image effected in the mind of the public of the mark applied for, the applicant repeats its arguments based on the difference between the goods to dispute any risk of unfair advantage.
79      It is apparent from the foregoing that the Board of Appeal was fully entitled to conclude that, even though the goods are different, in view of the other factors such as the similarity of the marks, although weak, the significant reputation of the earlier mark — a reputation which extends to the general public of the mark applied for — and the fact that aphrodisiac effects are sometimes attributed to the natural products in Class 29 covered by the mark applied for, it is possible that the general public would establish a link between the two signs and transfer the positive values of the earlier mark to the goods of the mark applied for.
80      Consequently, it must be held that the applicant’s arguments are insufficient to call into question the finding that there is a risk that by using the mark applied for without due cause, the applicant would take unfair advantage of the reputation of the earlier mark.
81      The applicant’s single plea in law must therefore be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
82      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, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Gall Pharma GmbH to pay the costs.
Berardis
Spielmann
Csehi
Delivered in open court in Luxembourg on 3 May 2018.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.