JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 November 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark RUXIMBLIS – Earlier EU word mark RUXIMERA – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑542/20,
Stada Arzneimittel AG, established in Bad Vilbel (Germany), represented by J.-C. Plate and R. Kaase, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, A. Folliard-Monguiral and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pfizer Inc., established in New York, New York (United States), represented by V. von Bomhard, J. Fuhrmann and P.-F. Karamolegkou, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 June 2020 (Case R 1877/2019-4), relating to opposition proceedings between Pfizer and Stada Arzneimittel,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and R. Norkus (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 27 August 2020,
having regard to the response of EUIPO lodged at the Court Registry on 25 January 2021,
having regard to the response of the intervener lodged at the Court Registry on 14 January 2021,
further to the hearing on 19 May 2021,
gives the following
Judgment
Background to the dispute
1        On 26 February 2018, the applicant, Stada Arzneimittel AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the word sign RUXIMBLIS.
3        The goods in respect of which registration was sought are in Classes 5, 10 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical preparations; veterinary preparations; medicine; sanitary preparations for medical purposes; dietary supplements and dietetic preparations; dietary supplements for humans; dietary supplements for animals; medical and veterinary preparations and articles; infant formula; diagnostic preparations; plasters, materials for dressings; dressings, medical; teeth filling material; dental impression materials; disinfectants; preparations for destroying vermin; fungicides; herbicides’;
–        Class 10: ‘Surgical instruments; medical and veterinary apparatus and instruments; dental apparatus and instruments; medical instruments for application on animal bodies; applicators for medications; medical apparatus for introducing pharmaceutical preparations into the human body; diagnostic apparatus for medical purposes; artificial limbs; artificial eyes; artificial teeth; orthopaedic articles’;
–        Class 44: ‘Medical services; providing of medical information relating to diseases and health problems, including online and on the internet; dissemination of medical information via an interactive platform’.
4        On 15 June 2018, the intervener, Pfizer Inc., filed a notice of opposition to registration of the mark applied for.
5        The opposition was based on the EU word marks RUXIMERA, registered on 4 December 2015 under number 14500821, RUXIENCE, registered on 24 February 2016 under number 14790968, and RUXMEOR, registered also on 24 February 2016, under number 14790943.
6        The three earlier marks were registered in respect of goods in Class 5 of the Nice Agreement corresponding to the following description: ‘Pharmaceutical preparations; veterinary preparations; sanitary preparations for medical purposes’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation 2017/1001.
8        By decision of 26 June 2019, the Opposition Division upheld the opposition in part, having based its examination on the earlier mark RUXIMERA. Specifically, it dismissed the opposition in respect of the goods ‘herbicides’ in Class 5 and ‘artificial limbs; artificial eyes; artificial teeth; orthopaedic articles’ in Class 10, and in respect of all the services in Class 44.
9        On 22 August 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      On 20 December 2019, the intervener filed a cross-claim against the decision of the Opposition Division. That cross-claim was limited to costs.
11      By decision of 16 June 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
12      The Board of Appeal found that the relevant public was the general public and the professional public in the medical, pharmaceutical and veterinary fields, paying a higher than average, if not high, level of attention, and that the relevant territory was the European Union.
13      When comparing the goods, the Board of Appeal upheld the decision of the Opposition Division, which had found that the goods in question were in part identical, in part similar to a high degree and in part similar to a low degree.
14      When comparing the trade marks at issue, the Board of Appeal found that they were visually and phonetically similar to an average degree and that it was impossible to undertake a conceptual comparison, since neither of the marks conveyed any meaning.
15      Taking into account all those factors and the normal degree of inherent distinctiveness of the earlier mark, the Board of Appeal found that there was a likelihood of confusion even where the level of attention of the relevant public was high.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those of the appeal proceedings.
17      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
18      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
19      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
20      The applicant claims, in essence, that the Board of Appeal erred in its assessment of the visual and phonetic similarity of the trade marks at issue and, as a result, wrongly concluded that there was a likelihood of confusion.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23      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 line of 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).
24      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the trade 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 territory and the relevant public
25      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
26      The Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory for the purposes of analysing the likelihood of confusion was that of the European Union. It also found that the relevant public was the general public and the professional public in the medical, pharmaceutical and veterinary fields, paying a higher than average, if not high, level of attention.
27      The applicant does not dispute those assessments by the Board of Appeal. Moreover, there is no evidence in the file capable of calling them into question.
The comparison of the goods
28      According to settled case-law, in assessing the similarity of the goods or services in question, 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).
29      In the present case, the Board of Appeal upheld the assessment of the Opposition Division that the goods in question were in part identical, in part similar to a high degree and in part similar to a low degree.
30      The applicant does not dispute those assessments by the Board of Appeal. Moreover, there is no evidence in the file capable of calling them into question.
The comparison of the signs
31      As regards the visual comparison of the trade marks at issue, the applicant submits, in essence, that the Board of Appeal incorrectly found that the trade marks at issue were similar to an average degree, since approximately half of the letters that form those marks are different.
32      According to the applicant, it is apparent from the judgment of 14 October 2009, Ferrero v OHIM – Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/08, EU:T:2009:400) that two marks need not necessarily be regarded as similar merely because they share the same sequence of letters.
33      As a result, the applicant submits, the trade marks at issue have at most a below-average degree of similarity, ‘that is to say, [they are] no more than very remotely similar’.
34      As regards the phonetic comparison, the applicant submits that, in the trade marks at issue, the emphasis falls on different syllables, which produces, overall, a different aural impression.
35      Furthermore, the applicant points out that the number of syllables is different. The mark applied for has three syllables ‘RU-XIM-BLIS’, with the emphasis falling on the middle syllable, whereas the earlier mark has four syllables, that is to say, ‘RU-XI-ME-RA’, with the emphasis falling on the third syllable. Those differences in the syllables that are stressed and pronounced are clearly audible and they far outweigh any similarity between the signs.
36      By comparing the syllables of the trade marks at issue, the applicant considers that the first syllables of each of the marks are identical and the second syllables are, at best, similar to a below-average degree. The third syllable of the mark applied for, ‘BLIS’, is different from the third syllable of the earlier mark, ‘ME’. Lastly, the fourth syllable of the earlier mark has no equivalent in the mark applied for.
37      There are therefore significant phonetic differences between the trade marks at issue, in particular, between, on the one hand, the group of letters ‘XIMERA’, which contains the consonants ‘X’, ‘M’ and ‘R’ and the vowels ‘I’, ‘E’ and ‘A’, in the earlier mark and, on the other, the group of letters ‘XIMBLIS’, which contains the consonants ‘X’, ‘M’, ‘B’, ‘L’ and ‘S’ and the two ‘I’ vowels, in the mark applied for.
38      According to the applicant, it is apparent from the case-law of the General Court that the mere fact that several letters in the first part of a one-word trade mark are the same does not necessarily mean that the signs are similar.
39      As a result, the applicant submits that, phonetically, the trade marks at issue have no or, at most, only a very remote similarity.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      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 components. 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).
42      As regards, in the first place, the visual comparison, it must be stated that the trade marks at issue are almost identical in length, since the mark applied for has nine letters and the earlier mark has eight. The first five letters of which the trade marks at issue consist, that is to say, ‘R’, ‘U’, ‘X’, ‘I’ and ‘M’, are to be found in the same order and in the same position in each of the marks. It is apparent from the case-law that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (see, to that effect, judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83).
43      As the Board of Appeal rightly pointed out in paragraph 22 of the contested decision, given that the consumer normally attaches more importance to the first part of words (see judgment of 24 October 2019, MSI Svetovanje v EUIPO – Industrial Farmaceutica Cantabria (nume), T‑41/19, not published, EU:T:2019:764, paragraph 68 and the case-law cited), the presence of the same root, ‘RUXIM’, in the trade marks at issue creates a visual similarity which is not offset
by the differences resulting from the presence of the groups of final letters ‘ERA’ in the earlier mark and ‘BLIS’ in the mark applied for.
44      As a result, the Board of Appeal was correct to find, in paragraph 24 of the contested decision, that there was an average degree of visual similarity between those marks.
45      As to the applicant’s argument that the reasoning given in that regard by the Board of Appeal in the contested decision was in contradiction to that developed by the Board of Appeal in the decisions
which were the subject of the related cases T‑239/20, Stada Arzneimittel v EUIPO – Pfizer (RUXXIMLA), and T‑248/20, Stada Arzneimittel v EUIPO – Pfizer (RUXYMLA), it should be noted that, although it is true that, in those decisions, the presence of the final letter ‘A’, common to the trade marks at issue, was taken into account for the purposes of the visual comparison, the Board of Appeal also relied on the elements of
identity and similarity present in the initial parts of the trade marks concerned in those cases.
46      In the second place, as regards the phonetic comparison, it should be stated at the outset that the applicant does not dispute the Board of Appeal’s assessment concerning the syllable division, that is to say, ‘RU-XIM-BLIS’ for the mark applied for and ‘RU-XI-ME-RA’ for the earlier mark. Moreover, there is no evidence in the file capable of calling that assessment into question.
47      In addition, in the circumstances of the present case, the group of initial letters ‘RUXIM’, common to the trade marks at issue, will be pronounced identically, irrespective of the number of syllables in each of the marks and the rules of pronunciation in the various languages spoken in the European Union. The fact that, as the applicant submits, the emphasis falls on the second syllable of the mark applied for, that is to say, ‘XIM’, and on the third syllable of the earlier mark, that is to say, ‘ME’, can have only a very limited effect on the overall phonetic impression. In that regard, it should be recalled that it is apparent from the case-law cited in paragraph 41 above that the phonetic comparison of the signs must be carried out by taking into account the overall impression given by those signs, as the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.
48      Consequently, the Board of Appeal rightly concluded that the signs at issue were phonetically similar to an average degree.
49      In the third and last place, as regards the conceptual comparison of the trade marks at issue, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that that comparison is neutral, since those marks did not convey any meaning in the relevant territory. Moreover, there is no evidence in the file capable of calling that assessment into question.
The likelihood of confusion
50      As regards the global assessment of the likelihood of confusion, the applicant submits that any risk can be ruled out, since there is a below-average degree of visual and phonetic similarity and since the relevant public pays a high level of attention in the case of health products. It argues that a likelihood of association is also ruled out.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      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 similarities 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).
53      In the present case, following the global assessment of the likelihood of confusion, the Board of Appeal found that, given the average degree of visual and phonetic similarity between the trade marks at issue as well as the identity and similarity of the goods in question and the normal degree of inherent distinctiveness of the earlier mark, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 could not be ruled out even in respect of the goods which are similar to a low degree and even taking into account a higher level of attention of the relevant public.
54      That assessment by the Board of Appeal is correct.
55      The Board of Appeal found, which the applicant has not disputed, that the goods in question were in part identical, in part similar to an average degree and in part similar to a low degree.
Furthermore, it is apparent from the foregoing that, contrary to what the applicant submits, the trade marks at issue are visually and phonetically similar to an average degree, whereas the conceptual comparison is neutral.
56      It should also be noted that the applicant does not dispute the Board of Appeal’s assessment that the earlier mark has a normal degree of inherent distinctiveness.
57      Furthermore, the fact that the relevant public will be more aware of the identity of the producer or supplier of the product or service that it wishes to purchase does not mean that that public will examine the mark before it down to the smallest detail, or that it will compare that mark in minute detail to another mark. Even for a public displaying a high level of attention, it remains the case that the average consumer only rarely has the opportunity to compare the different marks directly, but must rely on his or her imperfect recollection of them (see judgment of 22 November 2018, Endoceutics v EUIPO – Merck (FEMIVIA), T‑59/18, not published, EU:T:2018:821, paragraph 65 and the case-law cited).
58      Consequently, since the Board of Appeal took into account all the foregoing factors, it was right to find, in paragraph 35 of the contested decision, that there was a likelihood of confusion between the trade marks at issue.
59      It follows that the single plea in law must be rejected as unfounded.
60      The action must therefore be dismissed in its entirety.
Costs
61      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.
62      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Stada Arzneimittel AG to pay the costs.
Marcoulli
Frimodt Nielsen
Norkus
Delivered in open court in Luxembourg on 10 November 2021.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.