JUDGMENT OF THE GENERAL COURT (Third Chamber)
17 September 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark MediWell — Earlier national word mark WELL AND WELL and earlier national figurative mark well & well LES PHARMACIENS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑502/18,
Pharmadom, established in Boulogne-Billancourt (France), represented by M.-P. Dauquaire, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
IRF s. r. o., established in Bratislava (Slovakia),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 June 2018 (Case R 6/2018-5), relating to opposition proceedings between Pharmadom and IRF,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 August 2018,
having regard to the response lodged at the Court Registry on 4 December 2018,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 5 February 2016, IRF s. r. o. filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), 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)).
2        Registration as a mark was sought for the figurative sign shown below, for which the colour claimed was blue:
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 3, 5, 10 and 35 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, in essence, to bleaching preparations, pharmaceuticals, surgical apparatus and the wholesaling and retailing of those goods.
4        The application was published in the European Union Trade Marks Bulletin of 19 May 2016.
5        On 19 August 2016, the applicant, Pharmadom, 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, first, on the earlier French word mark WELL AND WELL No 123929829, filed on 26 June 2012 and registered on 19 October 2012, and, second, on the earlier French figurative mark No 134007987, coloured red and green, filed on 28 May 2013 and subsequently registered on 7 November 2014 as shown below, both of which were registered, in essence, in respect of the goods and services in Classes 3, 5, 10, 35 and 44.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        On 3 November 2017, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion.
9        On 2 January 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.
10      By decision of 8 June 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal. First, following the Opposition Division’s approach, it carried out an assessment starting with the earlier French word mark WELL AND WELL and found that the relevant territory for examining the likelihood of confusion is France. Second, as regards the relevant public, the Board of Appeal confirmed that, in the present case, the relevant public will display a level of attention ranging from average to high. As regards the comparison of the goods and services, it confirmed the Opposition Division’s assessment — which was not disputed by the parties — that they are in part identical and in part similar or dissimilar.
11      Third, as regards the mark applied for, the Board of Appeal considered that the element ‘medi’ dominates the overall impression, although the element ‘well’ cannot be overlooked. Regarding the element ‘well’, it held, contrary to the Opposition Division, that at least part of the relevant public will understand it as an English word meaning ‘good’ and it therefore has a low distinctiveness for the goods at issue. It then stated that the word ‘medi’ will be perceived as an abbreviation of the word ‘medicine’ and is therefore descriptive of the goods in Classes 5 and 10 and of such goods subject to sale under the services in Class 35. The Board of Appeal went on to find that the signs at issue have only a low visual and phonetic similarity. Conceptually, for the part of the public that understands the elements ‘medi’ and ‘well’, it found that the signs have some degree of similarity. For the part of the public that understands the element ‘medi’, the signs are conceptually different.
12      As regards the earlier French figurative mark, the Board of Appeal considered that, as it contains additional word and figurative elements, it can be considered even more dissimilar than the earlier word mark WELL AND WELL. It therefore concluded that there is no likelihood of confusion with the earlier French figurative mark. Finally, as regards the global assessment of the likelihood of confusion, the Board of Appeal ruled out any likelihood of confusion by reason of the phonetic, conceptual and, above all, visual differences between the signs at issue.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        annul the Opposition Division’s decision and reject the trade mark application in respect of the entirety of the goods and services covered;
–        order EUIPO to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Preliminary observations
15      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. The applicant submits, in essence, that the Board of Appeal erroneously analysed the marks at issue and consequently erred in its assessment of the likelihood of confusion.
16      First, it must be recalled that, under Article 8(1)(b) of Regulation 2017/1001, the mark applied for is not to 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.
17      Second, according to settled case-law, the fact that the relevant 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 within the meaning of Article 8(1)(b) of Regulation 2017/1001, in particular where the marks at issue are identical or similar and also the goods or services which they cover are identical or similar. Furthermore, those conditions are cumulative (see judgments of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited, and 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).
18      Third, 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 that the average consumer may have of the goods or services in question plays, in particular, a decisive role in the global assessment of that likelihood of confusion. 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).
19      Fourth, 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). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
The relevant public and comparison of the goods
20      The applicant maintains that the Board of Appeal examined the issue of the relevant public’s level of attention principally in relation to pharmaceutical goods and goods for medical use. In essence, it did not take into consideration the fact that some services in Class 35 concern the wholesaling and retailing of the goods in Class 3 and the offering on the internet of some products in Class 3. In the applicant’s view, since the goods in question are aimed at the general public, the same applies for the services in Class 35 and, in those circumstances, the general public displays an average level of attention, and not ‘higher than average’ as stated by the Board of Appeal.
21      EUIPO disputes the applicant’s arguments.
22      As regards the definition of the relevant public, the Board of Appeal found, in paragraph 21 of the contested decision, that, given the nature of the goods and services at issue as a whole, they were aimed at both the general public and at professionals with specific professional knowledge. In its assessment, therefore, the Board of Appeal took into consideration the two categories of public concerned, as the Opposition Division had done previously. Accordingly, the applicant’s argument regarding the lack of precision in the category of public at which the services in Class 35 are aimed cannot be upheld, because it is clear from the contested decision that the general public was also taken into account by the Board of Appeal in its assessment.
23      As regards the level of attention of that public, the Board of Appeal confirmed the Opposition Division’s assessment and stated that the level of attention ranges from average to high. The applicant’s argument that the Board of Appeal took into consideration only the high level of attention of the public cannot succeed either. It is clear from the contested decision that the Board of Appeal duly took into account the ‘average’ level of attention, and not only the high level of attention in respect of pharmaceutical goods. Furthermore, as regards Class 35 in particular, the applicant states merely that the level of attention is average and not ‘higher than average’, because wholesaling and retailing relates to goods in Class 3. Such an assertion, even if well-founded, cannot in any event change the final outcome reached by the Board of Appeal in its assessment, because it in fact took into account that level of attention when it stated that such level could, as a whole, vary from average to high.
24      In relation to the comparison of the goods, the Board of Appeal endorsed the Opposition Division’s findings, which were not disputed by the parties. According to both bodies, the goods and services are identical, similar (to different degrees) or dissimilar.
The comparison of the signs
25      As regards the distinctive and dominant elements of the marks at issue, the applicant contests, first, the Board of Appeal’s assessment of the figurative element ‘well’, which, in its opinion, cannot be perceived as a purely decorative element. Second, it submits that the term ‘well’, which is not part of the French vocabulary, is perfectly distinctive and that the Board of Appeal should not have made a distinction between the part of the public that understands that word and that part for which the term has no significance. Third, it submits that, for some services in Class 35, the term ‘medi’ is not distinctive and that, ultimately, ‘well’ is the sole genuinely distinctive element of the mark applied for.
26      EUIPO disputes the applicant’s arguments.
27      First of all, as regards the distinctiveness of the word element ‘well’, it should be noted that, as stated in paragraph 22 above, the relevant public is composed of the general public and health professionals. The latter generally have a good knowledge of English and can in any event easily understand the meaning of certain words very common in everyday language, as is the case with the word element ‘well’.
28      In that regard, the Court has indeed already held that the word ‘well’ may refer to the concept of ‘well-being’ (judgment of 15 December 2016, Redpur v EUIPO — Redwell Manufaktur (Redpur), T‑227/15, not published, EU:T:2016:745, paragraph 49). The Board of Appeal was therefore right to find that, for that part of the relevant public, the word element ‘well’ has a low distinctiveness, whereas, for the public who do not understand English, it has a normal distinctiveness.
29      As to the distinctiveness of the term ‘medi’, the Board of Appeal considered that that term is an abbreviation of the word ‘medicine’ and that it therefore constitutes the root or base of many words related to the medical field. Accordingly, that word element was considered descriptive of the goods in Classes 5 and 10 where they fall within the medical field and of the services in Class 35 relating to the sale of those goods. For the remaining services in Class 35, it considered that that term has a normal distinctiveness. For the goods in Class 3, it is merely allusive.
30      The applicant nevertheless maintains that, for those services that are not related to wholesaling or retailing of the goods in Classes 5 and 10, that term is not distinctive, as the relevant public would immediately link it to the medical field. It deduces from this that the term ‘well’ is the only element which is genuinely distinctive.
31      However, such an argument cannot be upheld.
32      It should be pointed out that several services in Class 35 do not directly relate to the medical field, such as, inter alia, the rental of advertising space, marketing research, opinion polling and advertising. Consequently, the Board of Appeal was entitled to find that that term is distinctive for the remaining services in Class 35.
33      As regards, next, the visual comparison, the applicant submits, in essence, that as the element ‘well’ is the sole distinctive element, repeated twice in the earlier mark, there is a likelihood of confusion between the marks at issue.
34      EUIPO disputes the applicant’s argument.
35      It should be noted in that regard that the Board of Appeal, after having taken into consideration the fact that the two marks at issue share the same word element ‘well’, carried out a specific analysis of their differences.
36      In particular, it found that the two marks at issue differ, first, due to the repetition of the element ‘well’ and the presence of the element ‘and’ and, second, due to the presence of the word element ‘medi’, which is dominant in the mark applied for, as well as the figurative elements of that mark, that is to say, the stylisation of the sign and the colour blue. It then stated that, since the relevant public is normally more attracted to the first part of a mark, it was led to conclude that, in view of those differences, the marks in question have only a low similarity.
37      Regarding the assessment of the various elements forming the mark applied for, it must be held that the Board of Appeal was correct to find that, since the element ‘medi’ is written in bold, it is visually dominant in comparison to ‘well’. Furthermore, since the font styles of the two word elements differ and each word element starts with a capital letter, it correctly found that the public would undoubtedly perceive the mark in question as consisting of two distinct word elements.
38      Contrary to what the applicant maintains, the Board of Appeal did not consider the word element ‘well’ to be a ‘purely decorative component’. Conversely, it examined that element as a word component and it merely found, rightly, that that element’s font style, a relatively common italic typeface, was not striking to the point of being able to constitute on its own an indication of the commercial origin of the goods and services in question. That is also confirmed by paragraph 36 of the contested decision where, when the Board of Appeal refers to the figurative elements of the mark applied for, it describes them as ‘the stylisation of the sign’. Consequently, that argument must be rejected.
39      However, the applicant is of the opinion that the word element ‘well’ is the sole distinctive and dominant element and that the word element ‘medi’ will not be retained by the relevant public because it is a basic and common abbreviation. That argument is, nevertheless, not conclusive.
40      It should be noted that, first, as stated in paragraph 28 above, the element ‘well’ is distinctive only for the part of the relevant public that does not understand English and, second, the Board of Appeal correctly found that the word element ‘medi’ is the dominant word element due to its bold font style, which, from a visual perspective, is particularly eye-catching for the relevant public. Consequently, in view of the differences between the marks at issue, as indicated in paragraph 36 above, the Board of Appeal’s assessment that the degree of visual similarity between the marks at issue is low must be confirmed.
41      Furthermore, as to the phonetic comparison, the applicant claims, first, that the pronunciation of the element ‘well’, common to both marks, is identical. Second, as regards the elements which differ between the two marks, the applicant submits that the element ‘and’ of the earlier mark is of no great importance in the light of the repetition of the dominant element ‘well’. Furthermore, the applicant submits that, since the element ‘medi’ is not distinctive here, consumers will pay more attention to the element ‘well’, which will be kept in mind more.
42      EUIPO disputes the applicant’s arguments.
43      On this point, the Board of Appeal found that although the two marks at issue do coincide phonetically due to the presence of the common element ‘well’, they nevertheless differ specifically by reason of the additional elements present in each sign. In particular, it considered that the mark applied for would be pronounced ‘medi’ ‘well’, whereas the earlier mark would be pronounced ‘well’ ‘and’ ‘well’.
44      In that regard, contrary to what the applicant asserts, the repetition and the presence of the element ‘and’ give a rhythm and characteristic sound to the earlier mark. Likewise, the applicant cannot claim that, even if the element ‘well’ were dominant, which is not the case here, the element ‘medi’ is less important phonetically because it is descriptive of the goods and services, since, for a phonetic comparison, both marks must be analysed as they are, without taking into account the descriptive or distinctive nature of the elements of which they are composed. Accordingly, it must be concluded that none of the applicant’s arguments concerning the phonetic comparison of the marks at issue are well-founded or relevant.
45      Finally, as regards the conceptual comparison, the Board of Appeal considered that the marks, taken as a whole, have no significance for the relevant public, but that it is conceivable that at least part of that public will be able to recognise the terms ‘medi’ and ‘well’. Therefore, according to the Board of Appeal, for those who do not understand the word element ‘well’, the marks at issue are not similar whereas, for the other part of the relevant public that can understand the meaning of the word element ‘well’, those signs have some degree of conceptual similarity. In the circumstances, the Board of Appeal’s analysis must be confirmed (see also paragraphs 27 and 28 above in the context of the analysis of the distinctiveness of the word element ‘well’). The applicant has not, in any event, directly challenged such an analysis, but rather has merely asserted the distinctive and dominant nature of the word element ‘well’.
The analysis carried out in relation to the earlier national figurative mark
46      The applicant claims, in essence, that the Board of Appeal did not sufficiently analyse the opposition in relation to the earlier French figurative mark.
47      EUIPO disputes the applicant’s arguments.
48      In that regard, according to the Board of Appeal, the earlier French figurative mark (see paragraph 6 above) is not similar as ‘it contains further word and figurative elements, which are not present in the contested mark. Moreover, it covers the same scope of goods and services. Therefore, no likelihood of confusion exists with respect to th[at] earlier [mark]’. Although concise, that reasoning nevertheless emphasises the fact that the figurative mark in question differs from the earlier word mark for which a comprehensive analysis of the various elements was carried out by the Board of Appeal.
49      It should also be pointed out that the French figurative mark in question is in red and green and that the additional word elements, ‘les pharmaciens’, appear below the main part of the elements ‘well [and] well’. Therefore, it must be held that the elements that differentiate the two marks at issue, such as the colours and additional word elements, confirm, in essence, that there is no likelihood of confusion.
50      With regard to the applicant’s argument that the Board of Appeal did not take into account the similar stylisation of the letters ‘well’ in both signs in that those letters appear in italics, it should be pointed out that the two stylisations, in turn, also differ in several respects. First, the element ‘well’ in the mark applied for is in blue, whereas in the earlier figurative mark it is in red and green. Second, even if a ‘handwritten’ style is common to both marks at issue, in the mark applied for the stroke is very thin, whereas in the earlier figurative mark it is much thicker and appears to be almost three-dimensional. Moreover, the relevant public will have a level of attention here ranging from average to high. Consequently, the Board of Appeal was correct to find that there is no likelihood of confusion between the two marks.
Global assessment of the likelihood of confusion
51      According to the case-law, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and the extent of the similarity or difference between the signs may depend on their inherent qualities (see, to that effect, judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49).
52      The global assessment of the likelihood of confusion must be based on the overall impression given by the signs at issue, bearing in mind, inter alia, their distinctive and dominant components (see paragraph 19 above).
53      Thus, according to the applicant, the Board of Appeal, in essence, attached too much weight to the initial part of the mark applied for because that is only a ‘descriptive prefix’. Since the element ‘medi’ is juxtaposed as a prefix, the Board of Appeal erred in stating that ‘the common element [was] placed at the end of the contested sign’. Ultimately, in the applicant’s submission, the Board of Appeal should have found that there is a likelihood of confusion.
54      On that point, it should first be noted that, here, the low visual, phonetic and (only for part of the relevant public — see, in this respect, paragraph 45 above) conceptual similarities linked to the presence of the common element ‘well’ do not offset the differences characterising the marks at issue.
55      Next, as already stated in paragraphs 36 and 37 above, the differences at issue are due, first, to the dominant element of the mark applied for, which is the term ‘medi’, stylised and positioned at the beginning of the sign, and, second, to the particularities of the structure of the two marks, one composed of the two terms ‘medi’ and ‘well’ and the other of the repetition of the term ‘well’ and the conjunction ‘and’. In addition, since the public in question has a level of attention ranging from average to high, it will be able to carry out the necessary analysis in the light of the clearly perceptible differences, notwithstanding the descriptive nature of the element ‘medi’.
56      It must therefore be concluded, as the Board of Appeal did, that the differences between the opposing marks are sufficient to rule out any likelihood of confusion between the marks at issue. As the single plea in law relied on by the applicant is unfounded, it must be rejected and, consequently, the action must be dismissed in its entirety, without the need to rule on the admissibility of the second head of claim, seeking to annul the Opposition Division’s decision.
Costs
57      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.
58      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 (Third Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Pharmadom to pay the costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 17 September 2019.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.