JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 March 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark BREZTRI – Earlier EU word marks ONBREZ, BREZILIZER and BREEZHALER – No likelihood of confusion – Lack of enhanced distinctiveness of the earlier marks – Article 60(1)(a) and Article 8(1)(b) of Regulation (EU) 2017/1001 – Article 27(3)(b) of Regulation (EU) 2018/625)
In Case T‑175/22,
Novartis AG, established in Basle (Switzerland), represented by A. Nordemann-Schiffel, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by N. Lamsters and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
AstraZeneca AB, established in Södertälje (Sweden), represented by C. Tenkhoff and T. Herzog, lawyers,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, G. De Baere and S. Kingston, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Novartis AG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 January 2022 (Case
R 737/2021-2) (‘the contested decision’).
Background to the dispute
2        On 31 May 2018, the intervener, AstraZeneca AB, obtained registration of the EU word mark BREZTRI, following an application lodged on 16 February 2018.
3        The goods covered by that mark were in 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 corresponded to the following description: ‘Pharmaceutical preparations and substances’.
4        On 23 September 2019, the applicant filed an application for a declaration of invalidity with EUIPO based on the earlier EU word marks ONBREZ, BREZILIZER and BREEZHALER. The marks ONBREZ and BREEZHALER designated, inter alia, goods in Class 5 corresponding to the following description:
‘Pharmaceutical preparations’. The trade mark BREZILIZER covered goods in Class 5 corresponding to the following description:
‘Pharmaceutical preparations’.
5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a), read in conjunction with Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
6        On 22 February 2021, the Cancellation Division rejected the application for a declaration of invalidity in respect of the goods referred to in paragraph 3 above.
7        On 22 April 2021, the applicant filed an appeal with EUIPO against the decision of the Cancellation Division.
8        By the contested decision, the Board of Appeal dismissed the appeal.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      The applicant relies on two pleas in law, alleging, respectively, infringement of Article 27(3)(b) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and infringement of Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001.
12      It is necessary, first of all, to examine the second plea in law.
The second plea in law, alleging infringement of Article 60(1)(a) and of Article 8(1)(b) of Regulation No 2017/1001
13      The applicant disputes the findings of the Board of Appeal concerning, first, the level of attention of the relevant public, secondly, the comparison of the signs at issue, thirdly, the enhanced distinctiveness, acquired through use, of the earlier marks ONBREZ and BREEZHALER and, fourthly, the global assessment of the likelihood of confusion.
14      Article 8(1)(b) of Regulation No 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
15      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).
16      For the purposes of applying Article 8(1)(b) of Regulation No 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
17      In the present case, the applicant does not dispute the comparison of the goods, carried out by the Board of Appeal in paragraph 24 of the contested decision, according to which the goods concerned are identical.
The level of attention of the relevant public
18      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, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
19      The Board of Appeal found, in paragraphs 21 and 22 of the contested decision, that the relevant public consisted of both medical professionals with a high degree of attentiveness and end consumers with a ‘higher than average’ degree of attentiveness.
20      The applicant does not dispute that the relevant public is composed of both medical professionals and the general public. However, it disputes the Board of Appeal’s finding that medical professionals and end consumers display the same high degree of attentiveness. In that regard, it distinguishes between, on the one hand, medical professionals, whose attention would be both high and of a high ‘quality’ on account of their training and professional activity, and, on the other hand, end consumers, who it does not dispute will pay greater attention to the goods in question compared to those used as everyday articles, but whose ‘quality’ of attention is necessarily different from that of medical professionals in that they do not have medical or pharmaceutical training. Furthermore, pharmaceutical preparations are potentially prescribed for, and consumed or used by all sectors of the general public, in particular children, adolescents and elderly people, whose level and ‘quality’ of attention may be different.
21      EUIPO and the intervener dispute those arguments.
22      As observed by EUIPO, it should first of all be noted that it is apparent from settled case-law that medical professionals have a high degree of attentiveness when prescribing medicines. Moreover, with regard to end consumers, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that those consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to demonstrate a high level of attentiveness upon prescription of the goods at issue in the light of the fact that those goods are pharmaceutical products (see judgment of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 26 and the case-law cited).
23      Next, it should be noted that the applicant itself states that the attention the general public pays with regard to the relevant goods will be ‘closer … than they would to brands used for an everyday … article’ and that the level of attention of that public will be ‘relatively high’. Furthermore, although it disputes the Board of Appeal’s finding that medical professionals and end consumers display the same high level of attention by drawing a distinction between the ‘level of attention’ and the ‘quality of attention’, its argument cannot, however, succeed, since, irrespective of their training and professional activity, the average consumers of the goods concerned, which have in common the essential purpose of being marketed on the recommendation of or through a medical professional and have a direct impact on health, are reasonably well informed and reasonably observant and circumspect and have a high level of attention, whether they are members of the general public or professionals.
24      As regards the applicant’s argument that the level of attention is different as regards elderly people and children, it must be stated, first, that the description of the goods covered by the marks at issue does not show that they are intended exclusively for elderly people or children, with the result that it is not appropriate to define the relevant public as being limited to those end consumers alone. Secondly, the applicant does not put forward any specific argument capable of showing that the level of attention of elderly persons is lower than that of other consumers. As regards children, it is sufficient to note that, usually, it is adults who purchase pharmaceutical preparations for the needs of children, with the result that, in any event, it is the level of attention of adults that remains relevant.
25      Accordingly, the Board of Appeal did not err in finding that, in the present case, the level of attention of the relevant public was high.
Comparison of the marks at issue
26      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).
–       The distinctive and dominant elements of the marks at issue
27      First, the applicant submits that the Board of Appeal erred in rejecting the argument that the elements ‘haler’, ‘lizer’ and ‘tri’ of the earlier marks BREEZHALER and BREZILIZER and the contested mark will be understood by the relevant public, and in particular by English-speaking medical professionals, as the respective abbreviations of ‘inhaler’, ‘nebulizer’ and ‘triple-therapy’. By contrast, it does not dispute that the earlier mark ONBREZ has no meaning for the whole of the relevant public. Secondly, it submits that the syllable ‘brez’ is the dominant element of the signs BREZILIZER and BREZTRI, since it is at the beginning of those signs. It also states that the element ‘brez’ and the syllable ‘breez’ of the earlier mark BREEZHALER have a ‘very distinctive character’.
28      EUIPO and the intervener dispute those arguments.
29      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).
30      For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
31      As a preliminary point, it should be recalled that the earlier marks are each composed of a single word, namely the words ‘brezilizer’, ‘breezhaler’ and ‘onbrez’. The same is true of the contested mark, consisting of the single word ‘breztri’.
32      In the present case, the Board of Appeal found, in paragraphs 38 to 50 of the contested decision, that the marks at issue did not consist of word elements that have a meaning for the relevant public and that that public would not break them down. It follows that the Board of Appeal did not identify any distinctive or dominant element in those marks.
33      In the first place, in paragraph 38 of the contested decision, the Board of Appeal held, without being challenged by the applicant, that the marks at issue had no meaning for the non-English-speaking public.
34      In the second place, the Board of Appeal reached the same conclusion as regards the English-speaking public. In that regard, it found, first, that the marks at issue, taken as a whole, had no meaning for that public. Secondly, it pointed out that the groups of letters ‘brez’ and ‘breez’ had no meaning for that public and that it was ‘far from obvious’ that the same public would associate the group of letters ‘haler’ in the earlier mark BREEZHALER with the word ‘inhaler’, ‘lizer’ in the earlier mark BREZILIZER with the word ‘nebulizer’ and ‘tri’ in the contested mark with the word ‘triple-therapy’, as the applicant claimed. In addition, it stated that the existence and use of such abbreviations in English medical vocabulary had not been demonstrated by the applicant.
35      As observed by EUIPO, it must be noted that the applicant has not put forward any evidence to demonstrate the existence and use of the abbreviations at issue in the medical field. Furthermore, as is apparent from paragraph 44 of the contested decision, even if part of the relevant public, namely, in the present case, medical professionals, might associate the groups of letters ‘haler’, ‘lizer’ and ‘tri’ with the medical products referred to in paragraph 34 above, the fact remains that, first, the connection between those groups of letters and the products concerned can be established only by passing through several stages of reasoning, with the result that it is neither direct nor specific, and, secondly, it does not prevent a significant part of the relevant public from not associating it with that concept (see, to that effect and by analogy, judgment of 27 January 2021, Olimp Laboratories v EUIPO – OmniVision (Hydrovision), T‑817/19, not published, EU:T:2021:41, paragraph 59).
36      In addition, nor did the Board of Appeal err in stating, in paragraph 46 of the contested decision, that the addition of the prefixes ‘breez’, ‘brezi’ and ‘brez’ respectively to the elements ‘haler’, ‘lizer’ and ‘tri’ distanced the marks at issue even further from the words ‘inhaler’, ‘nebulizers’ and ‘triple-therapy’, thereby making the association with them even less obvious.
37      Furthermore, as regards the argument based on a decision of the United Kingdom Intellectual Property Office of 31 March 2021, to which the applicant refers, suffice it to recall that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO or, on appeal, the Courts of the European Union, are not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – ARTHUR et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
38      Lastly, although the applicant maintains that the syllable ‘brez’ is the dominant element in the marks BREZTRI and BREZILIZER on the ground that, being situated at the beginning of those marks, it is immediately perceived by consumers and is more likely to attract their attention, it must be pointed out that the fact that an element is situated at the beginning of a mark cannot, even if that element is more likely than the elements which follow it to attract the relevant public’s attention, result in that term dominating the overall impression conveyed to that public by a trade mark for the purposes of the judgment of 12 June 2007, OHIM v Shaker (C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited) by virtue of that fact alone (see, to that effect, judgment of 7 October 2015, CBM v OHIM – Aeronautica Militare (Trecolore), T‑227/14, not published, EU:T:2015:760, paragraph 35). The applicant’s argument relating to the particular importance attached by the consumer to the beginning of a sign is therefore not conclusive and does not indicate, in any event, that that prefix must be regarded as the dominant element of the marks at issue.
39      The Board of Appeal was therefore right to find that the marks at issue were not composed of elements which have a meaning for the relevant public, whether English-speaking or not, and that, consequently, that public will not break them down. Therefore, that public will not identify the groups of letters ‘brez’ or ‘breez’ of those marks as their dominant element or their most distinctive element. Therefore, the Board of Appeal was right not to identify any dominant or distinctive element within those marks.
–       Visual similarity
40      In paragraphs 51 to 57 of the contested decision, the Board of Appeal found that there was a low degree of visual similarity between, on the one hand, the earlier marks BREEZHALER and BREZILIZER and, on the other hand, the contested mark. It found that the similarity resulting from the coincidence between the letters ‘b’, ‘r’, ‘e’ and ‘z’ was significantly weakened by the differences between the marks at issue, namely the fact that the contested mark was much shorter than the earlier marks and that the spelling of the different signs differed considerably.
41      In paragraphs 58 to 62 of the contested decision, the Board of Appeal found that the earlier mark ONBREZ and the contested mark were visually different in that the syllable ‘brez’, which is common to both marks, was not positioned in the same place within those marks and that that syllable was combined, for each of the two marks, with an additional syllable not present in the other mark.
42      First, as regards the earlier mark BREZILIZER and the contested mark, the applicant submits that those marks are visually similar to an average degree on account of the common element ‘brez’, placed at the beginning of the two marks, especially since the syllable ‘brez’ is unusual at the beginning of a trade mark for pharmaceutical preparations. It also points out that the two marks coincide in the letters ‘i’ and ‘r’.
43      Secondly, as regards the earlier mark BREEZHALER and the contested mark, the applicant submits that the relevant public will notice the first very similar part of the signs, which gives rise to ‘at least average’ visual similarity.
44      Thirdly, the applicant points out that the earlier mark ONBREZ and the contested mark coincide in the majority of their letters, as the syllable ‘brez’ is present in both signs. It reiterates in that regard the argument that that syllable is unusual for pharmaceutical preparations and is therefore highly distinctive and immediately perceived by the relevant public.
45      As a preliminary point, it should be noted that the applicant’s arguments regarding the visual similarity of the marks at issue are based to a large extent on the premiss that the element ‘brez’ of the trade marks BREZILIZER, ONBREZ and BREZTRI and the element ‘breez’ of the earlier mark BREEZHALER are particularly distinctive and dominant. As has been stated in paragraph 39 above, that premiss is incorrect. Therefore, the applicant’s arguments based on that premiss must be rejected.
46      Nor can the applicant’s other arguments succeed. First, as regards the comparison of the earlier mark BREZILIZER and the contested mark, it must be pointed out, as did the Board of Appeal, that the marks coincide in their first four letters. However, their other letters are significantly different. Furthermore, those marks also differ in length, the earlier mark BREZILIZER being composed of 10 letters, whereas the contested mark consists of only 7.
47      Furthermore, while it is true, as the applicant submits, that it is apparent from the case-law that the public generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009 in L’Oréal v OHIM – Spa Monopole (SPA THERAPY), T‑109/07, EU:T:2009:81, paragraph 30 and the case-law cited), that consideration cannot hold good in all cases (judgment of 8 September 2021, Cara Therapeutics v EUIPO – Gebro Holding (KORSUVA), T‑584/20, not published, EU:T:2021:541, paragraph 29). Furthermore, it cannot, in any event, call into question the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 48 and the case-law cited). In the present case, the relevant public will not necessarily pay greater attention to the beginning of the marks than to their middle or end. As stated in paragraphs 31 and 39 above, the marks at issue consist of a single word which the average consumer will perceive as a whole.
48      Accordingly, the Board of Appeal did not err in finding that the similarity resulting from the coincidence of the syllable ‘brez’ between the earlier mark BREZILIZER and the contested mark was significantly attenuated by the differences between them, even though that syllable is situated at the beginning of those marks.
49      Secondly, as regards the comparison between the earlier mark BREEZHALER and the contested mark, findings similar to those set out in paragraphs 46 to 48 above must be made particularly since the first syllable ‘breez’ of that mark differs from the first syllable ‘brez’ of the contested mark, and the letter ‘i’ is present only in the latter mark, which constitute further visual differences.
50      Accordingly, nor did the Board of Appeal err in finding that there was a low degree of visual similarity between the earlier mark BREEZHALER and the contested mark.
51      Thirdly, as regards the comparison between the earlier mark ONBREZ and the contested mark, the Board of Appeal was right to find that they shared the letter sequence ‘brez’, but that it was placed at the end of the earlier mark ONBREZ and at the beginning of the contested mark. In that regard, as stated in the contested decision, it follows from the case-law that the mere inversion of very similar elements in the signs at issue, which do not have a distinct and comprehensible meaning for the relevant public, creates a visual difference between them (judgment of 12 November 2014, Volvo Trademark v OHIM – Hebei Aulion Heavy Industries (LOVOL), T‑524/11, EU:T:2014:944, paragraphs 31 to 38).
52      Consequently, nor did the Board of Appeal err in finding that there was no visual similarity between the earlier mark ONBREZ and the contested mark.
–       Phonetic similarity
53      In paragraphs 63 to 66 of the contested decision, the Board of Appeal found that there was a low degree of phonetic similarity between, on the one hand, the earlier marks BREEZHALER and BREZILIZER and, on the other hand, the contested mark. It noted that those marks had in common the pronunciation of the letters ‘b’, ‘r’, ‘e’ and ‘z’, but differed in length, structure, intonation and pronunciation.
54      In paragraphs 67 to 70 of the contested decision, relying, in essence, on considerations similar to those set out in paragraph 41 above, the Board of Appeal found that the earlier mark ONBREZ and the contested mark were ‘phonetically similar to a very low degree, at most’.
55      First, as regards the comparison between the earlier mark BREZILIZER and the contested mark, the applicant submits that the visual similarities which it has pointed out, and which were referred to in paragraph 42 above, are reflected in the phonetic comparison of those marks. In that regard, it adds that, in the pronunciation of those marks, the emphasis will be placed on the first identical syllable ‘brez’ and that that syllable is followed by an ‘i’ sound. Therefore, the phonetic similarity between the same marks is at least average.
56      Secondly, as regards the comparison between the earlier mark BREEZHALER and the contested mark, the applicant relies, in essence, on the same arguments as those referred to in paragraph 43 above with regard to their visual comparison. It agrees with the Board of Appeal that the first syllable of the word ‘breezhaler’ is pronounced, at least in some parts of the European Union, in the same way as the first syllable of the word ‘breztri’. It concludes, however, that there is an ‘at least average’ phonetic similarity between those two marks.
57      Thirdly, as regards the comparison between the earlier mark ONBREZ and the contested mark, the applicant submits that the visual similarities are reflected in the phonetic comparison and that, in the pronunciation of those marks, the emphasis will be placed on the common syllable ‘brez’, as the Board of Appeal found. It therefore concludes that those marks are phonetically similar.
58      Like its arguments relating to the visual comparison of the marks at issue, most of the applicant’s arguments relating to the phonetic comparison of those marks are based on the premiss that the syllable ‘brez’ of the marks BREZILIZER, ONBREZ and BREZTRI and the syllable ‘breez’ of the mark BREEZHALER are their dominant and distinctive elements. As has been pointed out in paragraph 45 above, such arguments must be rejected.
59      Nor can the applicant’s other arguments succeed. First, as regards the phonetic comparison between the earlier mark BREZILIZER and the contested mark, it must be pointed out, as did the Board of Appeal, that they have in common the pronunciation of their first syllable ‘brez’. However, the marks differ significantly in length and structure, the earlier mark being pronounced as four syllables whereas the contested mark consists of only two. Furthermore, their central elements and their respective endings have nothing in common in that, in the contested mark, the syllable ‘tri’ is very different from the three syllables ‘i’, ‘li’ and ‘zer’ in the earlier mark.
60      Furthermore, for the same reasons as those set out in paragraph 47 above, it must be held that the similarity in pronunciation of the syllable ‘brez’ is significantly attenuated by the phonetic differences between the earlier mark BREZILIZER and the contested mark, which were found in paragraph 59 above, even though that syllable is situated at the beginning of those marks.
61      Thus, despite the fact that the earlier mark BREZILIZER and the contested mark coincide in their first syllable, the Board of Appeal did not err in finding that those marks were phonetically similar only to a low degree.
62      Secondly, as regards the phonetic comparison between the earlier mark BREEZHALER and the contested mark, findings similar to those set out in paragraphs 59 to 61 above must be made.
63      Therefore, nor did the Board of Appeal err in finding that there was a low degree of phonetic similarity between the earlier mark BREEZHALER and the contested mark.
64      Thirdly, as regards the comparison between the earlier mark ONBREZ and the contested mark, the Board of Appeal correctly observed that they shared the syllable ‘brez’, pronounced identically in each of them, but that those syllables differed, respectively, in the sound of the additional syllables ‘on’ and ‘tri’. Furthermore, as stated in the contested decision, the syllables of the marks at issue are pronounced in a totally different order, namely ‘brez’ after ‘on’ or ‘brez’ before ‘tri’. Furthermore, contrary to what the applicant claims, it has not been established that the emphasis will be placed on the syllable ‘brez’, in particular as regards that earlier mark.
65      Consequently, nor did the Board of Appeal err in finding that there was no phonetic similarity or, at most, a low degree of phonetic similarity between the earlier mark ONBREZ and the contested mark.
–       Conceptual similarity
66      As regards conceptual similarity, neither of the marks at issue has any meaning for the relevant public. Therefore, the conceptual comparison of the signs must be considered impossible (judgment of 8 July 2020, FF Group Romania v EUIPO – KiK Textilien und Non-Food (‚kix), T‑659/19, not published, EU:T:2020:328, paragraph 84), as the Board of Appeal rightly pointed out.
The enhanced distinctiveness of the earlier marks
67      The applicant submits that the evidence produced before the Board of Appeal should have led it to find that the earlier marks BREEZHALER and ONBREZ enjoyed enhanced distinctiveness acquired through use. It states that, contrary to what the Board of Appeal found, the acquisition by a mark of enhanced distinctiveness may result from its use as part of another registered mark or in conjunction with that mark.
68      EUIPO takes the view that the Board of Appeal properly assessed the evidence submitted by the applicant. In its view, the Board of Appeal took into account the applicant’s observations regarding the combined volume of sales of the goods sold under the marks ONBREZ BREEZHALER, SEEBRI BREEZHALER, ULTIRO/XOTERNA BREEZHALER and MIFLONIDE BREEZHALER in the European Union and the market shares of the goods sold under the mark ONBREZ BREEZHALER in 2017. The Board of Appeal was therefore right to conclude that, on the basis of the evidence produced by the applicant, it was not possible to establish the enhanced distinctiveness either of the earlier mark BREEZHALER or of the earlier mark ONBREZ.
69      The intervener takes the view that the applicant did not claim, or, in any event, substantiate the enhanced distinctiveness of the marks BREEZHALER and ONBREZ at first instance before EUIPO, in particular as regards the mark ONBREZ. It also adds that the evidence provided by the applicant is intended rather to prove use of the trade mark BREEZHALER for some of the goods in respect of which it is registered, namely ‘medical apparatus and inhalers’ in Class 10, and not for the goods in Class 5, since, according to the applicant, the word BREEZHALER designates the apparatus that enables a given pharmaceutical product to be diffused.
70      In paragraphs 77 to 85 of the contested decision, the Board of Appeal examined the distinctive character of the marks BREEZHALER and BREZILIZER. Since no claim of enhanced distinctiveness in respect of the earlier mark BREZILIZER had been made before it, it stated that the assessment of the likelihood of confusion in respect of that mark was based on its inherent distinctiveness, which was considered to be normal. That finding is not disputed by the applicant.
71      The Board of Appeal then examined the claim that the earlier mark BREEZHALER had enhanced distinctiveness as a result of its use. It observed in that regard that none of the evidence submitted by the applicant referred to that mark taken in isolation. On the contrary, it found that the evidence concerned that mark in conjunction with another mark or sign, such as ONBREZ, ULTIBRO, SEEBRI, MIFLONIDE and XOTERNA. It also found that the earlier mark BREEZHALER did not always appear clearly on packaging or goods and that, in view of the combination of the word ‘breezhaler’ with numerous different signs or marks, it was not certain that it would be perceived as a sign with a particular commercial origin. It concluded that the evidence did not establish that that mark on its own enjoyed enhanced distinctiveness in the European Union.
72      It should be noted in that regard that the evidence submitted by the applicant before EUIPO consisted of photographs of the packaging of the goods, data concerning the sales volumes of such goods and the market shares of those goods in the Member States between 2014 and 2019.
73      In that regard, it should be noted, as did the Board of Appeal, that the vast majority of that evidence refers not to the mark BREEZHALER considered in isolation, but to combinations thereof and of other signs, such as ONBREZ BREEZHALER, ULTIBRO BREEZHALER, SEEBRI BREEZHALER, MIFLONIDE BREEZHALER and XOTERNA BREEZHALER. By way of example, the combined volume of sales for all those products varied between 16 180 000 in 2014,
19 280 000 in 2018 and 18 623 000 units in 2019. Furthermore, the market shares of the goods covered by the sign ONBREZ BREEZHALER in 2017 varied between 1.4% and 100% according to the Member State, that market share being, for example, 44.3% in Italy, 48.1% in France and 50.7% in Spain.
74      According to settled case-law, the existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation 2017/1001. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear), T‑349/19, not published, EU:T:2020:488, paragraph 69 and the case-law cited).
75      Moreover, as the applicant submits, it is apparent from the case-law that the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of an element thereof and from the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated exclusively by the mark applied for, as originating from a given undertaking (see, to that effect, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30).
76      The case-law referred to in paragraph 75 above, delivered in the context of the examination of the distinctive character acquired through use of a mark which is, ab initio, devoid of distinctive character, is also applicable in the context of the examination of any enhanced distinctiveness acquired through use of an earlier mark which has, ab initio, inherent distinctive character, as in the present case, in order to determine whether there is a likelihood of confusion (see, to that effect, judgment of 17 July 2008, L
& D v OHIM, C‑488/06 P, EU:C:2008:420, paragraphs 49 to 51).
77      Furthermore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. Thus, for the purposes of registration of a mark, the trade mark applicant must prove that that mark alone, as opposed to any other mark which may also be present, identifies the particular undertaking from which the goods originate (judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraphs 65 and 66).
78      It follows that the acquisition of enhanced distinctiveness may result from the use of a mark in conjunction with another mark, provided that, as a consequence of that use, the mark at issue may alone identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. The case-law does not therefore require the mark at issue to appear on its own in the evidence submitted for that purpose.
79      In the present case, the Board of Appeal confined itself, in essence, to justifying the lack of enhanced distinctiveness of the earlier mark BREEZHALER on the basis that the evidence provided by the applicant did not present that mark on its own, but only in combination with other marks or signs. In accordance with the case-law referred to in paragraphs 74 to 77 above, it was for the Board of Appeal to examine whether, as a consequence of the use of that earlier mark in conjunction with another mark, the former was capable on its own of designating, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking.
80      However, the Board of Appeal did not carry out such an examination. In that regard, it merely asserted, in paragraph 82 of the contested decision, that, ‘even if consumers were to notice the name “BREEZHALER” on the product packaging, it is not certain that they would see it as a sign of a particular commercial origin’. However, that assertion is purely declaratory, if not speculative, in that it is not based on any specific analysis of the perception of the relevant public of combinations of trade marks displayed on the goods in question.
81      Although, in paragraph 82 of the contested decision, the Board of Appeal also stated that the earlier mark BREEZHALER was ‘sometimes not even clearly visible on the product packaging’, it must be held that, by contrast, that mark was clearly visible on the packaging of the goods in the majority of the evidence submitted by the applicant.
82      Consequently, it must be held that the Board of Appeal carried out an inadequate examination of the evidence submitted by the applicant in order to demonstrate that the earlier mark BREEZHALER had acquired enhanced distinctiveness through use.
83      However, that error has no bearing on the lawfulness of the contested decision. Even if the earlier mark BREEZHALER had enhanced distinctiveness acquired through use, that would not be sufficient to conclude that there was a likelihood of confusion (see paragraphs 90 to 101 below).
84      The same reasoning applies mutatis mutandis with regard to the earlier mark ONBREZ, since, in the evidence provided by the applicant, that mark appeared only in combination with the earlier mark BREEZHALER.
Global assessment of the likelihood of confusion
85      In paragraphs 86 to 91 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion in view of the identity of the goods concerned, the normal distinctiveness of the earlier marks, the high level of attention of the relevant public, the low degree of visual and phonetic similarity between the earlier marks BREEZHALER and BREZILIZER, on the one hand, and the contested mark, on the other hand, the lack of visual similarity and the low degree of phonetic similarity between the earlier mark ONBREZ and the contested mark, whereas the conceptual comparison between the marks at issue was not possible.
86      The applicant submits that the Board of Appeal did not take sufficient account of the fact that the element ‘brez’, appearing identically in the contested mark and the earlier marks BREZILIZER and ONBREZ, could lead the relevant public to consider that the contested mark forms part of a single group of marks designating the applicant’s goods. It thus submits that it is common for pharmaceutical products to use a single distinctive element in several combinations to form a group of products linked by their general area of therapy. It also reproduces the findings summarised in paragraphs 27, 42 to 44, 55 to 57 and 67 above regarding the distinctive and dominant elements of the marks at issue, the similarity of those marks and the enhanced distinctiveness of the earlier marks in order to conclude that there is a likelihood of confusion.
87      EUIPO and the intervener dispute the applicant’s arguments.
88      First of all, it should be borne in mind that 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).
89      Nonetheless, the principle of interdependence is not intended to apply mechanically. Thus, while it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, conversely, there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a weak degree of similarity between the marks at issue (see, to that effect, judgment of 27 June 2019, Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraphs 95 and 96 and the case-law cited).
90      In that regard, although the goods at issue are identical, as regards the similarity of the marks at issue, it must be held that, as stated in paragraphs 48, 50, 52, 61, 63, 65 and 66 above, the Board of Appeal did not err in finding that the earlier marks BREEZHALER and BREZILIZER had a low degree of visual and phonetic similarity with the contested mark, the earlier mark ONBREZ and the contested mark were visually dissimilar, they were ‘similar to a very low degree, at most’ phonetically and a conceptual comparison between the marks at issue was not possible.
91      Furthermore, as noted in paragraphs 22 to 25 above, the relevant public, composed of both medical professionals and the general public, will display a high level of attention. That factor is particularly important in the present case. According to the case-law, as regards pharmaceutical products which affect consumers’ state of health, consumers are less likely to confuse different versions of those products (see judgment of 21 October 2008, Aventis Pharma v OHIM – Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 29 and the case-law cited).
92      Furthermore, it is common for the trade marks for pharmaceutical products to be long and complex and therefore difficult to remember for the general public. Therefore, in the present case, owing to the impact of the choice of the product on health, the general public will pay great attention to the trade mark displayed on the products and will make a particular effort to ensure that it purchases the correct product. Furthermore, those goods are most often purchased in pharmacies, potentially on the advice of a professional. Thus, the relevant public, even if it is not professional, will not attribute the same commercial origin to goods bearing trade marks which have a low degree of visual and phonetic similarity and have no conceptual meaning, such as in the present case.
93      Thus, in any event, having regard to the low degree of similarity, at most, between the marks at issue and, above all, to the high level of attention of the relevant public, there is no likelihood of confusion, regardless of the degree of the normal or enhanced distinctiveness of the earlier marks ONBREZ and BREEZHALER.
94      The distinctive character of the earlier mark is only one factor among others involved in the assessment of the likelihood of confusion. Consequently, it cannot be ruled out that, even where an earlier mark has acquired highly distinctive character as a result of the use which has been made of it, the relevant public may nevertheless establish with certainty a distinction between the marks at issue (see judgment of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC), T‑125/21, not published, EU:T:2022:102, paragraph 114 and the case-law cited).
95      That conclusion is not called into question by the applicant’s argument that there is a likelihood that the consumer will establish a link between the marks at issue in that he or she might think that the contested mark is part of a single group of marks designating goods manufactured by the applicant on account of the common element ‘brez’. In that regard, as EUIPO points out, it should be noted that that argument, although not clearly stated or particularly developed, presupposes the existence of a family of marks.
96      However, the applicant has not demonstrated the existence of such a family of marks.
97      In that regard, first of all, it must be borne in mind that, when the application for a declaration of invalidity of an EU trade mark is based on several earlier marks which display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, which may be the case, inter alia, either when they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion (see, to that effect, judgment of 23 February 2006, Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE), T‑194/03, EU:T:2006:65, paragraph 123).
98      However, a likelihood of association with the trade marks of that ‘series’ or ‘family’ of trade marks can be invoked only if two cumulative conditions are satisfied. First, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. For there to be a likelihood of the public’s being mistaken as to whether the contested mark belongs to the series, the earlier marks forming part of that series must necessarily be present on the market. Since taking into account the serial nature of the earlier marks would entail widening the scope of protection of the trade marks forming part of the series, considered individually, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing, as in this case, the same distinctive element, and in the absence of any actual use of the marks, must be regarded as excluded. Consequently, failing proof of such use, any likelihood of confusion entailed by the appearance on the market of the contested mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the contested mark (see, to that effect, judgment of 23 February 2006, BAINBRIDGE, T‑194/03, EU:T:2006:65, paragraph 126).
99      Secondly, the contested mark must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That could not be the case where, for example, the element common to the earlier serial marks is used in the contested mark either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (see, to that effect, judgment of 23 February 2006, BAINBRIDGE, T‑194/03, EU:T:2006:65, paragraph 127).
100    In the present case, first, as the intervener and EUIPO submit, and contrary to what the applicant claims, the element ‘brez’ is not reproduced identically in all the earlier marks relied on in support of the application for a declaration of invalidity. Their first syllable is either ‘brez’ or ‘breez’. Furthermore, the element ‘brez’ is either positioned at the beginning or at the end of the marks at issue. Therefore, the applicant has not shown that the earlier marks that it invokes belong to a ‘family of marks’. Secondly, as EUIPO points out, the applicant submitted proof of use only in respect of two of the earlier marks relied on, namely BREEZHALER and ONBREZ, which is not sufficient for a finding of use on the market of a ‘family of marks’. Thus, the applicant cannot maintain that the contested mark might be perceived as belonging to a family of marks.
101    In the light of all of the foregoing, the Board of Appeal did not err in concluding that there was no likelihood of confusion.
102    Accordingly, the second plea in law must be rejected.
The first plea alleging infringement of Article 27(3)(b) of Regulation No 2018/625
103    The applicant submits that the Board of Appeal infringed Article 27(3)(b) of Regulation 2018/625 by examining only enhanced distinctiveness as a result of intensive use of the mark BREEZHALER without examining that of the mark ONBREZ.
104    EUIPO and the intervener dispute the applicant’s arguments.
105    This plea must be rejected as ineffective, given that, as has been pointed out in paragraphs 85 to 102 above, even if the earlier mark ONBREZ had acquired enhanced distinctiveness through use, that has no bearing on the lawfulness of the contested decision.
106    Therefore, the first plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
107    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 (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Novartis AG to pay the costs.
Kornezov
De Baere
Kingston
Delivered in open court in Luxembourg on 15 March 2023.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.