JUDGMENT OF THE GENERAL COURT (Second Chamber)
13 December 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark A’PEAL – Earlier national word mark APIRETAL – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – No link between the marks at issue – No damage to reputation – Article 8(5) of Regulation 2017/1001)
In Case T‑56/23,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by R. Guerras Mazón, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaitė and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Ahlberg-Dollarstore AB, established in Kista (Sweden),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, R. Norkus and W. Valasidis, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Laboratorios Ern, SA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 November 2022 (Case R 911/2022-1) (‘the contested decision’).
Background to the dispute
2        On 12 November 2020, Ahlberg-Dollarstore AB filed an application for registration of an EU trade mark with EUIPO in respect of the word sign A’PEAL.
3        The mark applied for covered goods in Classes 3 and 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
–        Class 3: ‘Toiletries; Body cleaning and beauty care preparations; Soaps and gels; Bath preparations; Hair preparations and treatments; Skin, eye and nail care preparations; Essential oils and aromatic extracts; Cleaning and fragrancing preparations’;
–        Class 5: ‘Sanitary preparations and articles; Medicated and sanitising soaps and detergents; Disinfectants and antiseptics’.
4        On 17 February 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above.
5        The opposition was based, inter alia, on the earlier Spanish word mark APIRETAL, filed on 18 October 1979 and registered on 16 February 1981 under No 921669 for goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary preparations; dietetical products for medical purposes; materials for dressings; disinfectants, insecticides and pesticides’.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7        On 8 April 2022, the Opposition Division rejected the opposition.
8        On 24 May 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. As regards the relative ground for refusal provided for in Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that, despite the identity or similarity of the goods covered by the marks at issue, and the enhanced distinctiveness of the earlier mark, the signs at issue were similar to such a low degree that any likelihood of confusion on the part of the relevant public was ruled out. As regards the relative ground for refusal of registration provided for in Article 8(5) of that regulation, the Board of Appeal found that, although the earlier mark has a reputation in relation to antipyretic drugs, the signs at issue were similar to such a low degree that the relevant public would not make a link between the two marks, with the result that damage to the reputation of the earlier mark was not established.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the application for registration;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
12      The applicant relies on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 8(5) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
13      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. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade mark’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
14      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. 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).
The relevant public, the relevant territory and the comparison of the goods
15      In the present case, the Board of Appeal noted in the contested decision that the likelihood of confusion had to be assessed in the light of the least attentive public, that is to say, the general public, whose level of attention may vary from average, as regards certain goods in Class 3, that may be used on a daily basis, to higher than average, as regards certain goods in Class 5, which can have a direct effect on human health.
16      The Board of Appeal also noted that, since the earlier mark was a Spanish mark, it had to be held that the relevant territory for the purposes of assessing the likelihood of confusion was Spain. As regards the comparison of the goods, the Board of Appeal endorsed, in the contested decision, the Opposition Division’s findings that the goods covered by the marks at issue were identical, similar or, at the very least, similar to a low degree.
17      There are no grounds to call those assessments into question, and, moreover, they are not disputed by the applicant.
The comparison of the signs
18      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
19      Visually, the Board of Appeal found that the signs at issue, although they coincide in their first letter, ‘a’, and their last two, ‘a’ and ‘l’, have a very low degree of visual similarity.
20      The applicant claims that the signs at issue both begin with the letter ‘a’, followed by the letter ‘p’, and both end with the letter ‘l’. The signs at issue therefore have a high degree of visual similarity.
21      EUIPO disputes the applicant’s arguments.
22      It is true that the applicant is justified in claiming that, contrary to the assessment in paragraph 30 of the contested decision, the letters ‘a’, ‘p’, ‘e’, ‘a’ and ‘l’ are present in the same order in both of the signs at issue. However, that fact alone is not sufficient for a finding that the degree of visual similarity between the signs at issue is high.
23      As the Board of Appeal found, the signs at issue consist, one of five letters, and the other of eight letters. Thus, the letters ‘a’, ‘p’, ‘e’, ‘a’ and ‘l’, the sequence of which consists of the sign A’PEAL, is interrupted, in the sign APIRETAL, by the presence of the letters ‘i’ and ‘r’ between the letters ‘p’ and ‘e’ and by the presence of the letter ‘t’ between the letters ‘e’ and ‘a’. In the sign A’PEAL, moreover, the letters ‘a’ and ‘p’ are separated by an apostrophe, with the result that the applicant is not justified in claiming that the first two characters of each of the signs are identical. Moreover, due to the greater length of the sign APIRETAL, apart from the first common letter ‘a’, the other letters common to both signs do not occupy the same position. Furthermore, the apostrophe, which it is not disputed is a rare sign in Spanish, will probably be noticed by the relevant public. Its presence will visually break down the sign A’PEAL into two parts (‘a’ and ‘peal’), whereas the sign APIRETAL will be perceived as a single word. Therefore, as the Board of Appeal correctly pointed out, the signs at issue have a very low degree of visual similarity.
24      In that regard, the applicant cannot usefully rely on the findings of the Opposition Division of EUIPO in the decision of 10 February 2020, AMISAN v AMINOSAN (Case B 2 926 916), which concern the assessment of the visual similarity between two marks in the context of a very different factual situation, since the signs compared in that case differ only by the addition of a middle syllable.
25      Phonetically, the Board of Appeal found that, even if it were to adopt the most favourable pronunciation of the sign A’PEAL to the applicant, namely ‘a-pil’, it differed from the pronunciation of the sign APIRETAL in the number of syllables, rhythm and intonation, with the result that the two signs had a very low degree of similarity.
26      According to the applicant, on the contrary, there is a high degree of phonetic similarity between the signs at issue. It submits that the pronunciation of the first two syllables, ‘a’ and ‘pi’, and of the end of the last syllable, ‘al’, in both signs, is identical. Furthermore, consumers generally tend to focus on the beginning of signs when perceiving a mark.
27      However, the applicant does not put forward any evidence capable of calling into question the Board of Appeal’s assessment that the number of syllables, rhythm and intonation differ in the pronunciation of the signs at issue. Moreover, even if, as EUIPO submits, it were likely that the Spanish public would pronounce the sign A’PEAL in three syllables, ‘a’, ‘pe’ and ‘al’, the differences noted by the Board of Appeal would still be enhanced, since only the first syllable of both signs would then be identical. It must therefore be held that there is a very low degree of phonetic similarity between the signs at issue.
28      Lastly, the applicant does not dispute the Board of Appeal’s finding that, since the signs at issue have no specific meaning for the Spanish public, a conceptual comparison between them is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).
The likelihood of confusion
29      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).
30      As is apparent from recital 11 of Regulation 2017/1001, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).
31      In the present case, the Board of Appeal found, in the contested decision, that the very low degree of visual and phonetic similarity between the signs excluded any likelihood of confusion or association, despite the identity or similarity of the goods. In order to reach that assessment, the Board of Appeal took account of the enhanced distinctiveness of the earlier mark, but it nevertheless found that that enhanced distinctiveness did not outweigh the striking differences between the signs.
32      The applicant submits that it endorses the assessments made by the Board of Appeal in the contested decision relating to the identity or similarity of the goods covered by the marks at issue. Therefore, and in view of the similarity of the signs and the fact that the consumer retains only an imperfect image of the marks, that consumer would be led to think that those goods have the same commercial origin, contrary to the view taken by the Board of Appeal.
33      EUIPO disputes the applicant’s arguments.
34      In the light of the foregoing findings of the Court, having regard to the level of attention of the relevant public, despite the identity or similarity of the goods covered by the marks at issue and despite the assessment of the Board of Appeal, which was not disputed, relating to the enhanced distinctiveness of the earlier mark in respect of antipyretic goods, which cannot be called into question, it follows from the very low degree of visual and phonetic similarity between the signs that the Board of Appeal was entitled to find, without making an error of assessment, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
35      In that regard, it must also be pointed out, as observed by EUIPO, that the goods in Class 5 covered by the mark applied for and the disinfectants covered by the earlier mark, in respect of which the existence of a reputation or enhanced distinctiveness acquired through use has not been established, were found to be identical. As regards the goods in Class 3 covered by the mark applied for, they were correctly classified only as similar, or similar to a low degree, to the goods covered by the earlier mark.
36      It follows that the applicant’s first plea in law must be rejected.
The second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
37      Article 8(5) of Regulation 2017/1001 provides that upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
38      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35; see also judgment of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
39      The existence of a link between the trademarks at issue must be appreciated from an overall standpoint, taking into account all factors relevant to the circumstances of the case. Those factors include: the degree of similarity between the conflicting marks, the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use and the existence of a likelihood of confusion on the part of the public (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 52 and the case-law cited).
40      In the contested decision, in the first place, the Board of Appeal found that the reputation of the earlier mark for ‘antithermal pharmaceutical preparations’, namely those intended for the prevention or control of fever, could not be denied. That fact alone was, however, considered insufficient to enable the relevant public to establish a link between the marks at issue.
41      The applicant claims that the earlier mark has a substantial reputation and refers in particular to a report by a market research company and to an affidavit by its managing director dated 1 June 2021, which it annexed to the application.
42      It must be held that the Board of Appeal, on the basis of the evidence submitted by the applicant, found that the Opposition Division had erred in finding that the earlier mark did not enjoy a certain reputation for antipyretic goods. There is no need to call that assessment into question.
43      In addition, it should be noted that, although it claims that the earlier mark has acquired a ‘high reputation’ for antipyretic goods, the applicant does not, by contrast, expressly dispute the Board of Appeal’s assessment relating to the reputation of the earlier mark and does not criticise any of the paragraphs of the contested decision relating to that assessment.
44      However, assuming that, by producing before the Court an affidavit from its managing director dated 1 June 2021 and a certificate issued by the Official Chamber of Commerce, Industry and Navigation of Barcelona (Spain) of 10 June 2021, the applicant seeks to establish that the Board of Appeal underestimated the strength of the earlier mark’s reputation, it must be stated, as EUIPO submits, that it did not submit that evidence before the Board of Appeal. Evidence submitted for the first time before the Court must be declared inadmissible, without there being any need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
45      In the second place, the Board of Appeal noted that, in order to satisfy the condition relating to the existence of a similarity between the marks for the purposes of Article 8(5) of Regulation 2017/1001, it was sufficient that the degree of similarity between the earlier mark with a reputation and the mark applied for was sufficient for the relevant public to establish a link between them, even without confusing them. In that regard, the Board of Appeal reproduced the elements of the comparison of the signs carried out in the context of the application of Article 8(1) of that regulation.
46      As is apparent from the examination of the first plea, the Board of Appeal was right to rule out any likelihood of confusion in the present case. However, as the Board of Appeal also correctly stated, it does not follow that the relevant public, even without confusing the marks at issue, is incapable of establishing a link between the marks within the meaning of the case-law cited.
47      Accordingly, in the third place, the Board of Appeal found that, despite the identity or similarity of the goods and the reputation of the earlier mark, the degree of similarity between the signs was so low that the possibility of a link made by the relevant public between the marks at issue would be merely speculative.
48      In that regard, it must be borne in mind, as has been pointed out in paragraphs 34 and 35 above, that the goods in Class 5 covered by the mark applied for were found to be identical to disinfectants, for which the earlier mark has no particular reputation. Furthermore, they have, at most, a tenuous link with antipyretic pharmaceutical preparations, the only goods for which the reputation of the earlier mark has been established. As regards the goods in Class 3 covered by the mark applied for, they were found not to be identical, but to be similar or similar to a low degree to the pharmaceutical and veterinary preparations covered by the earlier mark, a concept more general than that of antipyretic pharmaceutical preparations, and for which the reputation of the earlier mark has not been established. Furthermore, it is apparent from the examination of the first plea that the signs at issue have a very low degree of similarity between them. Consequently, despite the reputation of the earlier mark as regards antipyretic pharmaceutical preparations, the applicant is not justified in claiming that the relevant public will establish a link between the marks at issue, within the meaning of the case-law referred to in paragraph 39 above.
49      Lastly, and in the fourth place, the Board of Appeal found that, since the relevant public would not establish a link between the marks at issue, the use of the mark applied for would not enable its proprietor to take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier mark.
50      In that regard, the Board of Appeal was right to find that, in the absence of any link established by the relevant public between the marks at issue within the meaning of the case-law cited in paragraph 39 above, the condition relating to unfair advantage being taken of the use of the mark applied for could not be satisfied. Furthermore, it must be stated that the applicant has not, at any time during the proceedings before EUIPO, provided details or prima facie evidence capable of establishing that the alleged damage to the distinctive character or the reputation of the earlier mark is other than purely hypothetical and unsubstantiated.
51      It follows from the foregoing that the second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001, must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the plea of inadmissibility raised by EUIPO with regard to the head of claim in the application seeking refusal of the application for registration.
Costs
52      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. Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Laboratorios Ern, SA and the European Union Intellectual Property Office (EUIPO) each to bear their own costs.
Marcoulli
Norkus
Valasidis
Delivered in open court in Luxembourg on 13 December 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English