JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
15 October 2020 (*)
(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark BIOPLAST BIOPLASTICS FOR A BETTER LIFE – Earlier EU word mark BIOPLAK – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑2/20,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by S. Correa Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and E. Śliwińska, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Bio-tec Biologische Naturverpackungen GmbH & Co. KG, established in Emmerich (Germany),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 10 October 2019 (Case R 418/2019‑5), relating to opposition proceedings between Laboratorios Ern and Bio-tec Biologische Naturverpackungen,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov (Rapporteur), President, E. Buttigieg and K. Kowalik-Bańczyk, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 January 2020,
having regard to the response lodged at the Court Registry on 23 March 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 29 November 2013, Bio-tec Biologische Naturverpackungen GmbH & Co. KG obtained international registration No 1202538 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO).
2        The mark which is the subject of the international registration designating the European Union is the figurative sign represented below:
3        The goods and services in respect of which protection in the European Union of the figurative mark BIOPLAST BIOPLASTICS FOR A BETTER LIFE was claimed are in Classes 1, 5 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 1: ‘Chemicals used in industry, in particular pre-processed products and auxiliary agents for the manufacture of plastics; foaming agents for plastics; unprocessed plastics, in particular biodegradable unprocessed plastics, chemicals used in form of thermoplastically processable granules for pharmaceutical purposes’;
–        Class 5: ‘Sanitary products (included in this class), capsules (filled) for medical purposes (included in this class), excluding pharmaceutical and veterinary products’;
–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; services of a chemico-physical laboratory for testing and development of biodegradable plastics; scientific and technological consultancy in the field of testing and development of biodegradable plastics; all the aforesaid services in particular in the field of biodegradable plastics’.
4        The international registration designating the European Union in respect of the figurative mark BIOPLAST BIOPLASTICS FOR A BETTER LIFE was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and the trade mark application was published in Community Trade Marks Bulletin
No 90/2014 of 16 May 2014.
5        On 13 February 2015, the applicant, Laboratorios Ern, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier Spanish word mark BIOPLAK, which was registered on 22 June 1987 under the number 1120891 in respect of ‘pharmaceutical preparations’ in Class 5.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        By decision of 18 December 2018, the Opposition Division rejected the opposition in its entirety, taking the view that there was no likelihood of confusion.
9        On 18 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 10 October 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the application for registration;
–        order EUIPO and, if it decided to intervene in the present case, the other party to the proceedings before the Board of Appeal to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
14      Article 8(1)(b) of Regulation 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 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).
The relevant public
17      As regards the definition of the relevant public and its level of attention, the Board of Appeal pointed out that, since the earlier mark was a Spanish trade mark, the relevant public was the public in Spain (paragraph 21 of the contested decision). It confirmed the Opposition Division’s analysis that the goods and services at issue were aimed both at the general public and at consumers who were professionals and stated that, whereas, according to the case-law, the latter displayed a high level of attention, average consumers would also display an above-average level of attention as regards medicinal products, whether or not issued on prescription, since they affected their state of health (paragraph 24 of the contested decision). It concluded that the relevant public’s level of attention would be relatively high with regard to the goods in Class 5 as they had medical purposes or could have an impact on health and the human body (paragraph 25 of the contested decision). The parties do not dispute that definition of the relevant public and its level of attention.
The comparison of the goods and services
18      As regards the goods and services at issue, the applicant states, in the first place, that it agrees with the Board of Appeal’s analysis in paragraphs 31 and 32 of the contested decision as regards the comparison of the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark with, first, the ‘capsules (filled) for medical purposes (included in this class), excluding pharmaceutical and veterinary products’ and, secondly, the ‘sanitary products (included in this class)’. The Board of Appeal found, in the former case, that the goods were similar and, in the latter case, that they were similar to a low degree.
19      By contrast and in the second place, as regards the comparison of those ‘pharmaceutical preparations’ with the other goods and services covered by the trade mark application, that is to say, those in Classes 1 and 42 listed in paragraph 3 above, the applicant disputes the Board of Appeal’s findings that those goods and services are dissimilar to the goods covered by the earlier mark. It must therefore be examined whether the Board of Appeal erred in making those findings.
20      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
21      In particular, as regards the assessment of complementarity, it must be pointed out that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot be complementary (judgments of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58; of 17 February 2017, Hernández Zamora v EUIPO – Rosen Tantau (Paloma), T‑369/15, not published, EU:T:2017:106, paragraph 27; and of 29 January 2020, Aldi v EUIPO – Titlbach (ALTISPORT), T‑697/18, not published, EU:T:2020:14, paragraph 57).
22      In the present case, first, the Board of Appeal found, in the contested decision, that there was no similarity between the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark and the goods in Class 1 covered by the trade mark application (paragraph 29 of the contested decision). The Board of Appeal highlighted the fact that, although the goods in Class 5 covered by the earlier mark were usually combinations of various chemicals, their purpose as a finished product differed from that of the chemicals in Class 1, which were mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. It pointed out that the finished products in Class 5 were usually also aimed at a different public and did not share the same distribution channels.
23      That analysis is disputed by the applicant, which, after stating that goods and services may not be regarded as being different from each other solely on the ground that they appear in different classes, submits, as regards the goods in Class 1 covered by the trade mark application, that they are closely linked to the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark because they are a necessary raw material for the manufacture of the majority of pharmaceuticals. Furthermore, it argues that some of the goods covered by the trade mark application are used for pharmaceutical purposes and are therefore not only usually produced by the same undertakings as those that produce the ‘pharmaceutical preparations’ covered by the earlier mark, but are also used in the same sector, which leads to the conclusion that there is high degree of similarity between the goods at issue.
24      EUIPO disputes the applicant’s arguments.
25      It must be pointed out at the outset that the Board of Appeal did not rule out any similarity between the goods in Class 5 covered by the earlier mark and the goods and services in, respectively, Classes 1 and 42 covered by the trade mark application on the ground that they were included in different classes, but by examining, in accordance with the case-law referred to in paragraphs 20 and 21 above, all the relevant factors relating to those goods or services, as is shown by the summary of its analysis set out in paragraph 22 above.
26      That said, it must, first, be pointed out, as regards the goods in Class 1, that the Board of Appeal was right in finding that they were mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. The trade mark application covers chemicals used in industry, foaming agents for plastics and unprocessed plastics. It must be stated that such components may be involved in the manufacturing of an incalculable number of goods in all kinds of industrial and commercial sectors. Consequently, although the applicant is right in submitting that those goods may be included in the composition of the ‘pharmaceutical preparations’ covered by the earlier mark, the fact remains, first, that they may also potentially be included in the composition of all plastic-based goods other than those covered by the earlier mark and, secondly, that the relevant public will not be capable of identifying those basic goods as components of those preparations.
27      It is true that some of the goods in Class 1 covered by the trade mark application are, according to the description of those goods, intended for pharmaceutical purposes, namely the ‘unprocessed plastics’, which include ‘in particular’ ‘biodegradable unprocessed plastics’ and ‘chemicals used in form of thermoplastically processable granules for pharmaceutical purposes’. Although therefore, in that case, a link exists between those goods in Class 1 and the ‘pharmaceutical preparations’ in Class 5, namely that the former constitute raw materials for the manufacture of the latter, the fact remains that, as EUIPO points out, the mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct, which is the case here.
28      As has been stated in paragraph 22 above, the Board of Appeal pointed out that the goods covered by the earlier mark were finished products, which, by nature, no longer require any human intervention in order to achieve their final appearance, whereas the goods in Class 1 covered by the trade mark application were mainly raw materials, with regard to which it must be stated that their presence constitutes a prerequisite to the production, by means of more or less complex processes, of those finished products. The goods at issue are therefore different in nature. Their intended purpose is also different, since the ‘pharmaceutical preparations’ covered by the earlier mark are, as a general rule, directly made available to the end consumer, whether that consumer is a member of the general public or a professional, whereas the raw materials in Class 1, which the applicant claims in the trade mark application, are intended to be included in a small-scale or industrial process of transformation. As a result, the publics at which the goods at issue are aimed are also different, as the Board of Appeal correctly pointed out in paragraph 29 of the contested decision. Likewise, the distribution channels of those goods cannot be confused, because they are generally pharmacies or supermarkets, in the case of the ‘pharmaceutical preparations’ covered by the earlier mark, and manufacturers of chemicals and plastic and intermediaries in the marketing of the goods, in the case of the goods in Class 1 covered by the trade mark application. The Board of Appeal was therefore also justified in finding, in paragraph 29 of the contested decision, that those goods did not share the same distribution channels.
29      Lastly, as regards the applicant’s argument that those goods are complementary since the ‘pharmaceutical preparations’ covered by the earlier mark are made using the chemicals and plastics in Class 1 covered by the trade mark application, it is important to point out that, according to the case-law, goods cannot be regarded as complementary on the sole ground that one is manufactured with the other (see, to that effect, judgment of 9 April 2014, EI du Pont de Nemours v OHIM – Zueco Ruiz (ZYTeL), T‑288/12, not published, EU:T:2014:196, paragraph 39 and the case-law cited).
30      It must therefore be held, as the Board of Appeal found, that the goods in Class 1 covered by the trade mark application and those in Class 5 covered by the earlier mark are dissimilar.
31      As regards, secondly, the services in Class 42 covered by the trade mark application, the Board of Appeal found, in paragraph 33 of the contested decision, that those services had a different nature and purpose than those of the goods in Class 5 covered by the earlier mark, that those goods and services were neither complementary to nor in competition with each other and that their respective distribution channels and methods of use were different. It added that, although pharmaceutical companies were heavily involved in research and development activities, they did not usually provide such services to third parties. It concluded that those goods and services were dissimilar.
32      The applicant disputes that assessment, submitting that the services in Class 42 covered by the trade mark application are scientific activities to which the pharmaceutical industry and the medical sector devote significant resources and in which they make considerable investments. It argues that the same is true of the goods covered by the earlier mark, which are the fruit of research and development activities that are essential in the development of new medicinal products and other substances to be used in the medical sector. According to the applicant, the goods and services at issue could concern the same sector, namely the medical or pharmaceutical sector, and be used for the same purposes. Furthermore, in the applicant’s view, the services in Class 42 covered by the trade mark application may be provided by the same undertakings as those which manufacture and market the pharmaceutical preparations in Class 5 covered by the earlier mark, namely pharmaceutical laboratories. The applicant submits that the fact that the latter do not generally provide those types of services to third parties does not rule out the possibility that the relevant public may believe that those research services are provided by manufacturers of pharmaceutical products or even that a company offering the services in question is economically linked to those manufacturers, with the result that the goods and services at issue are, contrary to what the Board of Appeal stated, highly similar or closely connected. The applicant also states that the relevant public may perceive the mark applied for as a sub-brand of the earlier mark.
33      Those arguments cannot, however, succeed. Although it is true, as the applicant submits, that the pharmaceutical industry devotes significant resources to scientific and technological research, which the Board of Appeal expressly acknowledged in paragraph 33 of the contested decision, the fact remains that the nature, purpose, method of use and methods of marketing of the ‘pharmaceutical preparations’ in Class 5, on the one hand, and the scientific and technological services, research and design, in particular in connection with industry, services of a chemico-physical laboratory for testing and development of biodegradable plastics and scientific and technological consultancy in the field of testing and development of biodegradable plastics in Class 42, on the other hand, are different.
34      As has been stated in paragraph 28 above, the goods covered by the earlier mark are aimed at the end consumer, whether that consumer is a member of the general public or a professional, whereas the research, development and design services in, in particular, industrial matters, are generally aimed at the industrial or scientific sectors which use or are likely to use, in particular, biodegradable plastics. Consequently, the ways in which they are distributed and provided are different and they are aimed at different publics, which means, according to the case-law referred to in paragraphs 20 and 21 above, that they are dissimilar. Moreover, they do not have either the same nature or the same purpose, since research, design and development services by definition take place prior to the process of manufacturing goods, whereas finished goods, like the ‘pharmaceutical preparations’ covered by the earlier mark, constitute the outcome of that process.
35      It must therefore be held that the Board of Appeal was right in finding that the goods in Class 5 covered by the earlier mark and the services in Class 42 covered by the trade mark application were dissimilar.
36      It follows from the foregoing, first, that the goods and services in Classes 1 and 42 covered by the trade mark application and the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark are dissimilar, secondly, that the ‘sanitary products …, excluding pharmaceutical and veterinary products’ included in Class 5 and covered by the trade mark application and the ‘pharmaceutical preparations’ included in that class and covered by the earlier mark are similar to a low degree and, thirdly, that the ‘capsules (filled) for medical purposes (included in this class), excluding pharmaceutical and veterinary products’ covered by the trade mark application and the ‘pharmaceutical preparations’ included in that class and covered by the earlier mark are similar.
The comparison of the signs at issue
37      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 43).
38      Furthermore, 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).
39      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the signs at issue were visually and phonetically similar to a low degree and conceptually similar to a very low degree.
The visual comparison of the signs
40      In the present case, the Board of Appeal observed that the earlier mark was a word mark consisting of the element ‘bioplak’. It stated that, because it contained only a single element, that element could not be dominant and referred to the case-law which states that, where a mark is registered as a word mark, it is irrelevant whether it is represented in upper- or lower-case letters, as only the word as such is protected, regardless of any graphic form used or of whether the mark is written in upper- or lower-case letters. It pointed out that, conversely, the trade mark application related to a figurative mark, which included a word element, the term ‘bioplast’, written in black, standard, upper-case letters, which had to be considered to be the dominant element of that mark on account of its size and central position. The Board of Appeal also pointed out that the sign which was the subject of the trade mark application also comprised, under the dominant element, the expression ‘bioplastics for a better life’, written in smaller upper-case letters, and figurative elements consisting of the letter types used and a representation of a leaf above the letter ‘i’ of the term ‘bioplast’.
41      In addition, the Board of Appeal pointed out that, although the average consumer normally perceived a mark as a whole and did not engage in an analysis of its various details, the fact remained that, when perceiving a word sign, he or she would break it down into elements which, for him or her, had a specific meaning or which resembled words known to him or her. In the present case, in particular, as regards the prefix ‘bio’, which is common to the signs at issue, the Board of Appeal stated that that prefix would be widely understood as a reference to several concepts, depending on the goods or services to which it related, and could thus be understood as evoking the notion that the goods or services were ‘biological’, ‘organic’ and so forth or as a synonym of ‘ecological’, evoking the idea of respect for the natural environment and, in the context of the goods and services at issue, be specifically perceived as clearly evoking the concept of ‘biodegradable’. In that regard, the Board of Appeal found that that prefix was weakly distinctive or even non-distinctive in relation to the goods and services at issue, because it was indicative of the fact that the goods at issue and the goods which were the subject of the services at issue were of biological origin.
42      The parties do not dispute those assessments.
43      The Board of Appeal pointed out that, visually, the signs at issue coincided in the element ‘bio’, which was non-distinctive or weakly distinctive, and the letters ‘p’, ‘l’ and ‘a’, but that they differed in the endings of the word elements, namely the letter ‘k’ in the earlier mark and the letters ‘s’ and ‘t’ in the sign which is the subject of the trade mark application, in the presence of the expression ‘bioplastics for a better life’, notwithstanding its secondary and weakly distinctive nature, and in the figurative elements referred to in paragraph 40 above. It therefore found, as the Opposition Division had done, that the signs at issue were visually similar to a low degree.
44      The applicant submits that the dominant element ‘bioplast’ of the sign which is the subject of the trade mark application is almost identical to the earlier mark, whereas the expression ‘bioplastics for a better life’, which is descriptive, is almost illegible. It argues that the figurative elements of the sign to which the trade mark application relates are not sufficiently distinctive and that the stylisation and the representation of the term ‘bioplast’ in black letters are ordinary graphic means. According to the applicant, the signs at issue are therefore highly similar visually.
45      EUIPO disputes the applicant’s arguments.
46      First, it must be stated, as the Board of Appeal found, that the earlier mark is a word mark, whereas the trade mark application relates to a composite sign consisting of a number of word and figurative elements including the term ‘bioplast’, which is the dominant element of that sign on account, in particular, of its large size and central position. The sign which is the subject of the trade mark application also includes other word elements, namely the expression ‘bioplastics for a better life’, written in upper-case letters, albeit in smaller upper-case letters, below the dominant element, and figurative elements consisting of the letter types used and the representation of a leaf above the letter ‘i’ in the term ‘bioplast’. The applicant attempts to minimise the importance of those elements by arguing that that expression is almost illegible and that ordinary graphic means are used to represent the word elements. The applicant’s arguments in that regard cannot be accepted. Even though the expression at issue is in smaller letters than those used for the term ‘bioplast’, it is still clearly legible and, what is more, is positioned in the middle of that sign below that term and stands out because of its length, with the result that it will not go unnoticed by the relevant public.
47      Secondly, the relevant public will also not fail to notice the presence of a completely black leaf placed above the letter ‘i’ of the term ‘bioplast’, which might, in actual fact, be regarded as the stylised and fanciful dot of that letter.
48      Thirdly, as the applicant points out, the term ‘bioplast’ in the sign which is the subject of the trade mark application and the term ‘bioplak’ of which the earlier mark consists have their first six letters in common. It is, however, important to state that that sequence of letters begins with the prefix ‘bio’, the weak degree of distinctiveness or lack of distinctiveness of which with regard to the goods and services at issue, as was pointed out by the Board of Appeal in paragraphs 48 and 56 of the contested decision and is not called into question by the parties, considerably lessens the similarity arising from that sequence of letters in common, even though the relative importance of that prefix must, however, be taken into account when comparing the signs at issue (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 49).
49      In conclusion, the earlier mark and the dominant element of the sign which is the subject of the trade mark application have in common the sequence of six letters described in paragraph 48 above, the first three of which, which constitute a weakly distinctive or non-distinctive prefix, will not catch the attention of the relevant public much. By contrast, they differ markedly in their respective endings, namely ‘k’ and ‘st’, and in the presence, in the sign which is the subject of the trade mark application, of figurative elements and of an expression comprising five words, ‘bioplastics for a better life’, which are not negligible. In the light of a consideration of all of those elements, the Board of Appeal did not make any error of assessment in finding that the signs at issue were visually similar to a low degree.
The phonetic comparison of the signs
50      In paragraph 57 of the contested decision, the Board of Appeal found that, phonetically, the signs at issue coincided in the sound of the sequence of letters ‘b’, ‘i’ and ‘o’ and that of the sequence of letters ‘p’, ‘l’ and ‘a’. Furthermore, it observed that the pronunciation of those signs differed, first, in their respective endings, ‘k’ in one of them and ‘st’ in the other, and, secondly, on account of the presence, in the sign which is the subject of the trade mark application, of the expression ‘bioplastics for a better life’, which it, however, conceded was secondary in that sign. In paragraph 58 of the contested decision, the Board of Appeal stated that, although it could not be denied that the signs at issue had in common some sounds appearing in the same order, which thus created ‘a certain similarity’, the degree of phonetic similarity between those signs was low.
51      The applicant submits that, on the contrary, the pronunciation of the terms ‘bioplak’ and ‘bioplast’ is almost identical, on account of the presence of six letters in common, a very similar rhythm and intonation and the fact that they contain three syllables and have the same structure of vowels and consonants, with the exception of the last letters, ‘k’, on the one hand, and ‘st’, on the other hand, which will also be pronounced in a highly similar way.
52      EUIPO disputes the applicant’s arguments.
53      First, it must be borne in mind that, according to the case-law, in the strict sense, the phonetic reproduction of a composite sign corresponds to that of all of its word elements, regardless of their specific graphic features (see judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 118 and the case-law cited), with the result that, contrary to what the applicant submits, the expression ‘bioplastics for a better life’, which is, admittedly, secondary, but is not negligible in the overall impression created by the sign which is the subject of the trade mark application, cannot be disregarded in the phonetic comparison of the signs at issue.
54      Secondly, the Court has already held that the relative importance of the prefix ‘bio’ in the phonetic comparison of signs at issue is considerably reduced, as a result of its non-distinctive or weakly distinctive character, but that its presence must nevertheless be taken into account when making that comparison (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 56).
55      It follows that the signs at issue coincide phonetically in the first six letters, which they have in common, but it must, however, be pointed out that, even though the prefix ‘bio’ will be pronounced in the same way as regards each of the signs at issue, the fact remains that the relevant public, which is familiar with that non-distinctive or weakly distinctive element, will pay more attention to the pronunciation of the next of the terms concerned, namely ‘plak’ and ‘plast’. By contrast, the signs at issue differ significantly on account of the pronunciation of the five words constituting the expression ‘bioplastics for a better life’, which are present in the sign which is the subject of the trade mark application, but are not present in the earlier mark, and of the different endings of the terms ‘bioplak’ and ‘bioplast’, which, contrary to what the applicant maintains, are not pronounced in a highly similar way.
56      In the light of all of those considerations, it must be held that the Board of Appeal did not make any error of assessment in finding that the signs at issue were phonetically similar to a low degree.
The conceptual comparison of the signs
57      The Board of Appeal found, in paragraphs 46 to 50 of the contested decision, that the term ‘bioplast’ contained in the sign which is the subject of the trade mark application was likely to be broken down into the prefix ‘bio’ and the suffix ‘plast’ and that the relevant public would clearly recognise those two elements because, first, the prefix ‘bio’ would be widely understood in the sense mentioned in paragraph 41 above and, secondly, the suffix ‘plast’ would, for the relevant public, evoke the concept of ‘plastic’, the equivalent in Spanish being ‘plástico’ (plastic). It took the view that the term ‘bioplast’ thus referred to the concept that the goods covered by the trade mark application are made of or are intended for biodegradable plastics and the services covered by that trade mark application are intended for or are specifically concerned with biodegradable plastics. It found that that meaning was borne out by the other elements in the sign which is the subject of the trade mark application. Accordingly, in paragraph 52 of the contested decision, the Board of Appeal took the view that it was likely that the relevant public would perceive the meaning of the element ‘bioplastics’, with which the expression under the term ‘bioplast’ began, and would understand the prefix ‘bio’ and the suffix ‘plastics’, which was found to be very close to its Spanish equivalent ‘plásticos’. In paragraph 53 of that decision, it found that the figurative elements of the sign which is the subject of the trade mark application and, in particular, the graphical representation of a stylised leaf merely reinforced the descriptive meaning of the expression ‘bioplastics for a better life’.
58      As regards the earlier mark, the Board of Appeal pointed out, in paragraph 54 of the contested decision, that the term ‘bioplak’ of which that mark consisted was, as a whole, fanciful and therefore endorsed the Opposition Division’s finding that that term was meaningless for the relevant public.
59      In the light of those findings, the Board of Appeal observed, in paragraph 59 of the contested decision, that the signs at issue had in common only the same weakly distinctive notion associated with the prefix ‘bio’, which could not be given too much weight, as the impact of that conceptual similarity would be very low. Given that, in its view, the sign which is the subject of the trade mark application had a clear meaning for the relevant public, whereas the earlier mark did not have such a meaning, and that the only element common to the signs at issue, ‘bio’, was non-distinctive or weakly distinctive, the Board of Appeal found that the signs at issue were conceptually similar to a very low degree (paragraphs 49 and 59 of the contested decision).
60      The applicant disputes the assertion that the suffix ‘plast’ will be perceived by at least part of the Spanish public as an abbreviation of the word ‘plásticos’ (plastics), since there is no evidence to support that statement. It submits that, even if the prefix ‘bio’ were to be understood by consumers as being the commonly used abbreviation of the Spanish word ‘biológico’ (biological) and the suffix ‘plast’ were to be understood by consumers as being the abbreviation of ‘plástico’ (plastic), the signs at issue would be highly similar conceptually.
61      EUIPO disputes the applicant’s arguments.
62      It must be pointed out at the outset that the Board of Appeal was right in referring to the case-law which stated that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into elements which, for him or her, suggest a specific meaning or which resemble words known to him or her (see judgment of 6 April 2017, Policolor v EUIPO – CWS-Lackfabrik Conrad W. Schmidt (Policolor), T‑178/16, not published, EU:T:2017:264, paragraph 43 and the case-law cited). It is not disputed that part of the relevant public will break down the terms ‘bioplak’ of which the earlier mark consists and ‘bioplast’ in the sign which is the subject of the trade mark application into, first, the prefix ‘bio’, which is very widely used in trade and is immediately recognisable, and, secondly, the suffixes ‘plak’ as regards the earlier mark and ‘plast’ as regards that sign.
63      As regards, first, the meaning of the prefix ‘bio’, a meaning which has been referred to in paragraph 41 above, the Court has already confirmed that meaning on many occasions in its case-law (see, to that effect, judgments of 29 April 2010, Kerma v OHIM (BIOPIETRA), T‑586/08, not published, EU:T:2010:171, paragraphs 25 and 26; of 10 September 2015, Laverana v OHIM (BIO INGRÉDIENTS VÉGÉTAUX PROPRE FABRICATION), T‑30/14, not published, EU:T:2015:622, paragraph 20; and of 5 June 2019, Biolatte v EUIPO (Biolatte), T‑229/18, not published, EU:T:2019:375, paragraph 48).
64      As has been pointed out in paragraph 48 above, on account of its widespread use to designate goods and services which have the characteristics described in paragraph 41 above, the prefix ‘bio’ is regarded as having a weak distinctive character (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 67 and the case-law cited), with the result that the relevant public will not pay particular attention to that conceptual similarity.
65      Secondly, the Board of Appeal was also right in observing that the suffix ‘plak’ in the earlier mark was meaningless, whereas the suffix ‘plast’ in one of the word elements of the sign which is the subject of the trade mark application, although fanciful, referred, by means of an apocope, to the Spanish words ‘plástico’ or ‘plásticos’. In addition, the Board of Appeal was right in stating that the term ‘bioplastics’ in the expression ‘bioplastics for a better life’ would evoke the concept of plastic, as the suffix ‘plastics’ was very close to the Spanish word ‘plásticos’ (paragraph 52 of the contested decision). In the light of those considerations and contrary to what the applicant submits, the Board of Appeal did not have to provide support for its finding that the relevant public would understand the suffix ‘plast’ as meaning ‘plastic(s)’. Furthermore, the Board of Appeal was right in pointing out that the presence of a leaf above the letter ‘i’ in the term ‘bioplast’ would reinforce the reference to the word ‘biological’ (paragraph 53 of the contested decision).
66      Consequently, it must be held, as the Board of Appeal found, that, for the relevant public, the sign which is the subject of the trade mark application will, in connection with the goods and services covered by that application, be understood as referring to biodegradable plastics. The earlier mark will be understood merely as referring to something of a biological nature, which is neither comprehensible nor identifiable.
67      It follows that, from a conceptual standpoint, the signs at issue have in common only an allusion to the biological nature of the goods or services which they designate, which can justify, in the light of the weakly distinctive character of the prefix ‘bio’ (see paragraph 64 above), only a finding that there is a low degree of conceptual similarity between them.
68      Consequently, the applicant is not justified in claiming that the signs at issue are highly similar conceptually.
The assessment of the likelihood of confusion
69      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).
70      Furthermore, it must be borne in mind that, for the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes, by way of cumulative conditions, both that the mark in respect of which registration is sought and the earlier trade mark are identical or similar and that the goods or services to which the application for registration relates are identical or similar to those in respect of which the earlier trade mark was registered (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47, and of 15 March 2018, Marriott Worldwide v EUIPO – Graf (Representation of a winged bull), T‑151/17, not published, EU:T:2018:144, paragraph 31). Consequently, the mere fact that the goods and services covered by the marks at issue are different makes it possible to rule out any likelihood of confusion (see, to that effect, judgments of 26 September 2014, Arnoldo Mondadori Editore v OHIM – Grazia Equity (GRAZIA), T‑490/12, not published, EU:T:2014:840, paragraph 31, and of 28 October 2015, Monster Energy v OHIM – Home Focus (MoMo Monsters), T‑736/14, not published, EU:T:2015:809, paragraph 35).
71      As has been stated in paragraph 36 above, the pharmaceutical preparations in Class 5 covered by the earlier mark were correctly found to be different, first, from the goods in Class 1 and, secondly, from the services in Class 42 covered by the trade mark application. Consequently, any likelihood of confusion as regards those goods and services must be ruled out.
72      It therefore remains to be examined whether there is a likelihood of confusion as regards the goods covered by the signs at issue which have been found to be similar or similar to a low degree (see paragraph 36 above).
73      In that regard, it has been pointed out, first, that the signs at issue are visually, phonetically and conceptually similar to a low degree. There is therefore a low degree of overall similarity between the signs at issue.
74      Secondly, it must be stated, as the Board of Appeal found, that the relevant public will, in the present case, display a relatively high level of attention because it is faced with purchasing goods that have an impact on health, in such a way that it will be more likely to notice the differences between the earlier mark and the sign which is the subject of the trade mark application.
75      Thirdly, it must be pointed out, first, that the relevant public will attribute less importance to the element ‘bio’, which is common to the signs at issue and is very widely used, in particular in connection with health products, with the result that it is, for that public, more or less descriptive, and, secondly, that the impact of the similarity resulting from the presence of that prefix in both of the signs at issue is very low and that it is thus not decisive for the purposes of the global assessment of the likelihood of confusion (see, to that effect, judgment of 16 December 2015, Perfetti Van Melle Benelux v OHIM – Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 108). The relevant public’s attention will, as a result, naturally focus more on the elements which differentiate the signs at issue and, in particular, on the suffixes ‘plak’ in the earlier mark and ‘plast’ in the sign which is the subject of the trade mark application and on the other word and figurative elements in that sign. Consequently, the fact that, as the Board of Appeal pointed out, the sign which is the subject of the trade mark application evokes the words ‘plastic’ or ‘plastics’ and is therefore directly intelligible for the relevant public, whereas the earlier mark is meaningless, accentuates the dissimilarity between the signs at issue as regards that public’s perception of them, and that is so even if it is conceded, as the applicant submits in paragraphs 51 and 56 of the application, that the relevant public tends to abbreviate the pronunciation of the word element of the sign which is the subject of the trade mark application, which may, according to the case-law, occur depending on the conditions under which the goods or provision of services at issue are marketed (see, to that effect, judgment of 27 February 2019, Aytekin v EUIPO – Dienne Salotti (Dienne), T‑107/18, not published, EU:T:2019:114, paragraph 74).
76      Fourthly, in assessing whether there is a likelihood of confusion, one of the factors to be taken into account is the distinctive character of the earlier mark. The more distinctive the earlier mark, the greater will be the likelihood of confusion. Marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 36). In the present case, it is not disputed that the degree of inherent distinctive character of the earlier mark is average, as the Board of Appeal correctly pointed out.
77      Fifthly, as regards the argument alleging that there is a likelihood that the sign which is the subject of the trade mark application will be perceived merely as a variation or sub-brand of the earlier mark, it must be pointed out that it is apparent from the case-law that, where there is a family or series of trade marks and the likelihood of confusion results from the possibility that the consumer might be mistaken as to the provenance or origin of the goods or services covered by the trade mark in respect of which registration is sought, considering, erroneously, that that trade mark is part of that family or series, proof of the use of a sufficient number of trade marks capable of constituting a family or series is particularly important, since no consumer can be expected, in the absence of such use, to detect an element which is common to such a family or series of trade marks or to associate with that family or series another trade mark containing the same common element (judgments of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraphs 63 to 66, and of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO – Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 86).
78      Consequently, failing proof of the use of a sufficient number of trade marks capable of constituting a family or series, any likelihood of confusion which might be entailed by the appearance on the market of the trade mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the sign which is the subject of the trade mark application (judgment of 25 January 2017, Choco Love, T‑325/15, not published, EU:T:2017:29, paragraph 87). In the present case, it must be stated that the applicant has not provided either information or evidence showing that the conditions resulting from that case-law cited are satisfied. It follows that that argument must be rejected.
79      Lastly, it must be borne in mind that, according to the case-law, there can be no question of mechanically applying the principle of interdependence, without taking account of all the relevant factors. In particular, there is nothing to preclude a finding that, in the light of the circumstances of a particular case, there is no likelihood of confusion, even where the goods are identical and there is a low degree of similarity between the marks at issue (see, to that effect, judgment of 27 June 2019, Luciano Sandrone v EUIPO – J. García Carrión (Luciano Sandrone), T‑268/18, EU:T:2019:452, paragraphs 95 and 96 and the case-law cited). The same considerations apply a fortiori, as the case may be, where the goods are merely similar or similar to a low degree and there is a low degree of similarity between the signs, as in the present case. The analysis of the likelihood of confusion is based on a global assessment of all the relevant factors.
80      The Board of Appeal was therefore ultimately right in ruling out, in paragraph 68 of the contested decision, any likelihood of confusion in the present case, since the relevant public is not led to perceive the goods or services at issue as coming from the same undertaking or from economically linked undertakings.
81      That finding is not invalidated by the applicant’s reference to EUIPO’s decision-making practice, through its decisions of 24 February 2015 and 19 September 2018. In that regard, it must be borne in mind that it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
82      It must therefore be held that the Board of Appeal correctly applied Article 8(1)(b) of Regulation 2017/1001 and consequently the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the head of claim seeking the rejection of the application for registration.
Costs
83      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.
84      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laboratorios Ern, SA to pay the costs.
Kornezov
Buttigieg
Kowalik-Bańczyk
Delivered in open court in Luxembourg on 15 October 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.