3 June 2015 (*)
(Community trade mark — Invalidity proceedings — Community word mark PENSA PHARMA and Community figurative mark pensa — Earlier national and Benelux word marks PENTASA — Express consent to the registration of the Community trade mark before submission of the application for a declaration of invalidity — Article 53(3) of Regulation (EC) No 207/2009 — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 and Article 53(1)(a) of Regulation No 207/2009)
In Joined Cases T‑544/12 and T‑546/12,
Pensa Pharma, SA, established in Valencia (Spain), represented by M. Esteve Sanz, M. González Gordon and R. Kunze, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and J. Crespo Carrillo, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners before the General Court, being
Ferring BV, established in Hoofddorp (Netherlands) and Farmaceutisk Laboratorium Ferring A/S, established in Copenhagen (Denmark), represented initially by I. Fowler, Solicitor, A. Renck, V. von Bomhard and D. Slopek, lawyers, subsequently by I. Fowler, A. Renck, V. von Bomhard and J. Fuhrmann, lawyer, and lastly by I. Fowler and J. Fuhrmann,
TWO ACTIONS brought against the decisions of the Fifth Board of Appeal of OHIM of 1 October 2012 (Cases R 1883/2011-5 and R 1884/2011-5), relating to invalidity proceedings between Ferring BV and Farmaceutisk Laboratorium Ferring A/S, on the one hand, and Pensa Pharma SA, on the other,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni and L. Madise (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the applications lodged at the Court Registry on 14 December 2012 (T‑544/12) and 17 December 2012 (Case T‑546/12),
having regard to the responses of OHIM lodged at the Court Registry on 9 April 2013,
having regard to the responses of the interveners lodged at the Court Registry on 18 April 2013,
having regard to the order of the President of the Second Chamber of the General Court of 14 October 2013 joining Cases T-544/12 and T-546/12 for the purposes of the oral procedure and of the judgment, in accordance with Article 50 of the Rules of Procedure of the General Court,
further to the hearing on 18 November 2014,
gives the following
Judgment
Background to the dispute
1        On 13 March 2006, the applicant, Pensa Pharma, SA, filed an application for registration of the word sign PENSA PHARMA as a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        On 17 March 2006, the applicant filed an application for registration of the following figurative sign as a Community trade mark with OHIM pursuant to Regulation No 40/94, as amended:
3        The goods and services in respect of which registration was sought are in Classes 3, 5 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, according to the English language versions of the applications for registration, to the following description:
–        Class 3: ‘Soaps and shampoos; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;
–        Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;
–        Class 44: ‘Medical services and consultancy in the field of pharmacy’.
4        The Community trade mark applications for the word mark PENSA PHARMA and the figurative mark pensa were published in Community Trade Marks Bulletin No 2006/045.
5        On 6 February 2007, the interveners, Ferring BV and Farmaceutisk Laboratorium Ferring A/S, filed notices of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the marks applied for in respect of all the goods and services referred to in paragraph 3 above.
6        The oppositions were based on the earlier word marks PENTASA, registered in a number of Member States in respect of ‘pharmaceutical preparations’ in Class 5.
7        On 18 December 2008, the interveners sent OHIM letters in which they stated that they were withdrawing their oppositions to registration of the marks applied for.
8        On 17 February 2009 OHIM registered the figurative mark pensa under the number 004963542 in respect of all the goods and services referred to in paragraph 3.
9        On 11 March 2009, OHIM registered the word mark PENSA PHARMA under the number 004954831 in respect of all the goods and services referred to in paragraph 3.
10      On 15 September 2009, each of the interveners filed a separate application for a declaration of invalidity in respect of each of the registered marks on the ground that the registration was contrary to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and Article 8(5) thereof, and to Article 53(2) of that regulation. Those applications were directed against all the goods and services covered by each of the Community trade marks referred to in paragraphs 8 and 9 above.
11      The applications for a declaration of invalidity relating to Community word mark PENSA PHARMA were registered under the reference numbers 3872 C and 3896 C. The former application for a declaration of invalidity was based on the earlier rights held in the word ‘pentasa’ in the Benelux countries, Denmark, Germany, Spain, Latvia, Portugal, Finland and the United Kingdom. The latter application for a declaration of invalidity was based on the earlier rights held in the word ‘pentasa’ in the Czech Republic, France, Ireland, Italy, Hungary, Austria, Poland, Slovakia and Sweden.
12      The applications for a declaration of invalidity relating to the Community figurative mark pensa were registered under the reference numbers 3871 C and 3895 C. The former application for a declaration of invalidity was based on the earlier rights held in the word ‘pentasa’ in the Benelux countries, Denmark, Germany, Spain, Latvia, Portugal, Finland and the United Kingdom. The latter application for a declaration of invalidity was based on the earlier rights held in the word ‘pentasa’ in the Czech Republic, France, Ireland, Italy, Hungary, Austria, Poland, Slovakia and Sweden.
13      On 1 December 2009 the list of contested goods and services was restricted to:
–        Class 5: ‘Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings; disinfectants’;
–        Class 44: ‘Medical services and consultancy in the field of pharmacy’.
14      On 30 March 2011, OHIM informed the parties that it had decided to join the applications for a declaration of invalidity registered under the reference numbers 3872 C and 3896 C in its examination of Case R 1883/2011-5 and to join the applications for a declaration of invalidity registered under the reference numbers 3871 C and No 3895 C in its examination of Case R 1884/2011-5.
15      On 15 July 2011, in both cases, the Cancellation Division upheld the applications for a declaration of invalidity of the Community trade marks referred to in paragraphs 8 and 9 above in respect of all the contested goods and services.
16      On 14 September 2011, the applicant filed two notices of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decisions of the Cancellation Division.
17      By two decisions of 1 October 2012 (taken together, ‘the contested decisions’), with the case number R 1883/2011-5 in respect of the word mark PENSA PHARMA (‘decision in Case R 1883/2011-5’) and the case number R 1884/2011-5 in respect of the figurative mark pensa (‘decision in Case R 1884/2011-5’), the Fifth Board of Appeal of OHIM dismissed both of the appeals brought by the applicant.
18      The Board of Appeal stated, in particular, the following.
19      First, although the earlier marks are registered in a number of Member States of the European Union, it is sufficient for a likelihood of confusion to be established in one single Member State for a Community trade mark to be refused registration or declared invalid; the Cancellation Division was therefore right to decide to rely on the earlier registration in the Benelux countries (decision in Case R 1883/2011-5, paragraph 16) and in France (decision in Case R 1884/2011-5, paragraph 17). Secondly, the relevant public consists of consumers from the Benelux countries and France; having regard to the nature of the goods and services covered by the marks at issue, the level of attention of the relevant consumers is higher than average (decision in Case R 1883/2011-5, paragraph 16, and decision in Case R 1884/2011-5, paragraph 17). Thirdly, the goods and services covered by the marks at issue are identical or similar (decision in Case R 1883/2011-5, paragraph 18, and decision in Case R 1884/2011-5, paragraph 20). Fourthly, the marks at issue are similar visually and phonetically (decision in Case R 1883/2011-5, paragraphs 22 to 23, and decision in Case R 1884/2011-5, paragraph 25), even though, as regards the figurative mark pensa, there is only a low degree of visual similarity with the interveners’ earlier mark (decision in Case R 1884/2011-5, paragraph 24). Fifthly, the marks at issue have no meaning in French and in the other official languages of the Benelux countries, and the addition of the word ‘pharma’ to the word ‘pensa’ has no effect conceptually, in view of the descriptiveness of the former term (decision in Case R 1883/2011-5, paragraph 24, and decision in Case R 1884/2011-5, paragraph 26). Sixthly, none of the applicant’s arguments relating to the interveners’ consent to the registration of the contested marks, for the purposes of Article 53(3) of Regulation No 207/2009 (the peaceful coexistence of the marks on the Spanish and Italian markets for a number of years, the existence of a coexistence agreement between the parties which was signed in 2000, and the withdrawal by the interveners of their initial oppositions), may be taken into consideration for the purposes of assessing whether there is a likelihood of confusion between the signs at issue (decision in Case R 1883/2011-5, paragraphs 26 to 31, and decision in Case R 1884/2011-5, paragraphs 28 to 36). Seventhly, as regards the global assessment of the likelihood of confusion, it was found that the goods and services at issue were identical or similar and that the marks at issue were also similar. It was pointed out, in that regard, that the interveners’ earlier word mark PENTASA had acquired a highly distinctive character through use in the Benelux countries. There was thus a likelihood of confusion for the relevant public (decision in Case R 1883/2011-5, paragraphs 33 to 34). Eighthly, although there are some visual differences between the marks at issue, those differences were not sufficient to rule out a likelihood of confusion, in view, inter alia, of the highly distinctive character acquired through use of the interveners’ earlier word mark PENTASA in French territory (decision in Case R 1884/2011-5, paragraphs 38 and 39).
Forms of order sought
20      The applicant claims that the Court should:
–        annul the decision in Case R 1883/2011-5;
–        annul the decision in Case R 1884/2011-5;
–        in both cases, order OHIM and, if appropriate, the interveners to pay the costs incurred in the course of the proceedings before the Court and the costs incurred before OHIM.
21      OHIM contends that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs incurred by OHIM.
22      The interveners contend that the Court should:
–        dismiss the actions;
–        order the applicant to pay the costs, including all the costs incurred by the interveners.
Law
Admissibility
The documents submitted for the first time before the General Court
23      The leaflet for the product marketed under the trade mark PENTASA appears in Annex A.2 to the application in Case T‑544/12 and in Annex A.1 to the application in Case T‑546/12.
24      Following a request by the Court dated 10 September 2014, the applicant confirmed, by letter of 26 September 2014, that the leaflet referred to in paragraph 23 above, had not been communicated to OHIM in the course of the administrative procedure.
25      It is settled case-law that a document which is produced for the first time before the General Court cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the General Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited; see also judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraphs 136 to 144, and judgment of 10 November 2011 in LG Electronics v OHIM, C‑88/11 P, EU:C:2011:727, paragraph 25).
26      In those circumstances, Annex A.2 to the application in Case T‑544/12 and Annex A.1 to the application in Case T‑546/12 must be rejected as inadmissible.
The arguments put forward for the first time at the hearing
27      At the hearing, the applicant put forward, in particular, two arguments.
28      First, the applicant claimed, in essence, that the Board of Appeal had not ruled on the applications for a declaration of invalidity registered under the reference numbers 3896 C and 3871 C by ruling exclusively on the application for a declaration of invalidity registered under the reference number 3872 C in the decision in Case R 1883/2011-5 and on the application for a declaration of invalidity registered under the reference number 3895 C in the decision in Case R 1884/2011-5. The applicant maintained that, consequently, by ruling on only two of the four applications for a declaration of invalidity filed by the interveners, the Board of Appeal had infringed Article 8 of Regulation No 207/2009. The applicant observed, in that regard, that that was particularly so because, although the Board of Appeal had ruled on only two applications for a declaration of invalidity, it had ordered it to pay the costs in respect of the four applications for a declaration of invalidity filed.
29      Secondly the applicant submitted, in essence, that the Board of Appeal had assumed, wrongly, that the interveners’ marks were ‘earlier trade marks’ within the meaning of Article 8(1)(b) of Regulation No 207/2009, whereas, since they had not been renewed, those marks had lapsed nearly a year before the contested decisions.
30      The applicant admitted, at the hearing, that those arguments had not been put forward either during the administrative procedure or in its written pleadings before the Court and the Court took formal note of that in the minutes of the hearing.
31      In that regard, it is apparent from the case-law that it is for the Court to review the legality of the decision taken by the Board of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (see, by analogy, judgment of 28 June 2012 in I Marchi Italiani and Basile v OHIM — Osra (B. Antonio Basile 1952), T‑133/09, ECR, EU:T:2012:327, paragraph 16 and the case-law cited).
32      In those circumstances, the arguments of the applicant which are referred to in paragraphs 28 and 29 above must be rejected as inadmissible.
Substance
33      In support of the application for annulment of the contested decisions, the applicant relies, in essence, on two pleas in law, the first of which alleges infringement of Article 53(3) of Regulation No 207/2009 and the second of which alleges infringement of Articles 8(1)(b) and 53(1)(a) of that regulation.
The first plea, alleging infringement of Article 53(3) of Regulation No 207/2009
34      The applicant submits that the interveners consented, for the purposes of Article 53(3) of Regulation No 207/2009, to the registration of the contested marks before the submission of their applications for a declaration of invalidity.
35      According to the applicant, that consent is apparent, first, from the coexistence of the marks at issue on the Spanish and Italian markets for a significant number of years without any actual case of confusion, secondly, from the decision that the interveners took to withdraw the oppositions brought against the contested marks and, thirdly, from a coexistence agreement between the parties which was signed in 2000 (‘the coexistence agreement’).
36      Article 53(3) of Regulation No 207/2009 provides that a Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity.
37      It follows from this that the consent of the proprietor of the right must be express for the registration of a sign which may result in a likelihood of confusion to be permitted.
38      It is in the light of the foregoing that the applicant’s arguments must be examined.
The alleged peaceful coexistence in Spain and Italy
39      The argument which the applicant put forward seeking to show that the marks have peacefully coexisted in Spain and Italy and, consequently, that the proprietor of the earlier mark implicitly consented to the contested registration, is in the present case irrelevant, inasmuch as the contested decisions are based on an earlier mark which is registered in other Member States, namely in the Benelux countries (decision in Case R 1883/2011-5) and in France (decision in Case R 1884/2011-5).
40      As is apparent from paragraph 37 above, the peaceful coexistence of the marks at issue cannot take the place of the ‘express consent’ of the right holder (for the purposes of Article 53(3) of Regulation No 207/2009) to the registration of a sign which may give rise to a likelihood of confusion.
41      In those circumstances, it is necessary to reject the applicant’s argument as to the existence of consent, for the purposes of Article 53(3) of Regulation No 207/2009, linked to the alleged peaceful coexistence of the marks at issue in Spain and Italy.
42      Furthermore, in so far as the applicant submits that it proved that goods bearing the marks at issue had peacefully coexisted on the Spanish and Italian markets for the last 15 years and that no evidence of confusion was furnished by the interveners, it must be pointed out, as OHIM states, that a likelihood of confusion established in one or more Member States is sufficient to refuse registration of the trade mark applied for, without it being necessary to rule on the likelihood of confusion in other States relevant to the dispute (judgment of 13 July 2005 in Murúa Entrena v OHIM — Bodegas Murúa (Julián Murúa Entrena), T‑40/03, ECR, EU:T:2005:285, paragraph 85). In that regard, the Board of Appeal was justified in basing its examination, in both of the invalidity proceedings, on the earlier marks registered in the Benelux countries and France respectively.
The withdrawal of the oppositions
43      It must be pointed out that, in the present case, in the letters which they sent to OHIM and to the applicant, the interveners expressly stated that the withdrawal of the oppositions to the registration of the marks applied for would be followed up with applications for a declaration of invalidity once those marks were registered.
44      In those circumstances, the withdrawals in question cannot be interpreted as being tantamount to the interveners’ express consent, for the purposes of Article 53(3) of Regulation No 207/2009, to the registration of the contested marks.
45      Furthermore, contrary to what the applicant maintains, the principle of procedural economy cannot preclude a party’s right to protect its earlier rights by withdrawing its opposition with a view to filing an application for a declaration of invalidity. In the absence of any provision to the contrary in the legislation, a party is free to choose the legal remedy which it intends to use to assert its rights. In that regard, it must be noted that there is no provision in Regulation No 207/2009 that provides, at least expressly, that the withdrawal of an opposition entails the renunciation of the right to file an application for a declaration of invalidity. That withdrawal does not therefore, in law, have any effect on the lawfulness of the filing of a future application for a declaration of invalidity.
46      Furthermore, the fact that the interveners, by mistake, referred in their request to OHIM for withdrawal of their opposition to the registration of the sign PENSA PHARMA as a Community trade mark to a future application for a declaration of invalidity of the Community figurative mark pensa (instead of the Community word mark PENSA PHARMA) cannot be equated with express consent to the registration of the sign PENSA PHARMA for the purposes of Article 53(3) of Regulation No 207/2009.
47      In any event, the interveners’ representative certainly informed the applicant, by letter of 18 December 2008, that the withdrawal of that opposition would be followed up with an application for a declaration of invalidity against the Community word mark PENSA PHARMA at the end of the registration procedure.
The coexistence agreement
48      The applicant submits that the Board of Appeal should have taken the coexistence agreement into account and found that there was ‘consent’ on the part of the interveners to the registration of the contested marks, for the purposes of Article 53(3) of Regulation No 207/2009.
49      It is, however, apparent from the coexistence agreement that that agreement does not concern the contested marks, but a mark which is different from the contested marks, namely the figurative mark PENSA No 1 014 653, which is represented as follows:
50      Furthermore, the coexistence agreement cannot be interpreted in such a way as to extend beyond its scope without the express consent of the parties, for the purposes of Article 53(3) of Regulation No 207/2009.
51      The fact remains that there is no consent on the part of the interveners to the extension of the coexistence agreement to the contested marks and goods.
52      In addition, as regards the applicant’s argument that the Board of Appeal erred in the decision in Case R 1884/2011-5 in referring to the mark PENSA PHARMA instead of the figurative mark pensa in its considerations as to the effects of the coexistence agreement, it must be stated that what is involved here is merely a clerical mistake, which does not affect the validity of the Board of Appeal’s reasoning.
53      It is established that the mark to which the coexistence agreement relates (represented in paragraph 49 above) and the figurative mark pensa are different, with the result that that agreement cannot apply to the latter mark, to which it does not relate, and which is not, in any event, identical to the mark covered by the agreement (see, by analogy, judgment of 11 May 2005 in Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, ECR, EU:T:2005:169, paragraph 86).
54      In those circumstances, the clerical error in question is not capable of invalidating the findings of the Board of Appeal as to the inapplicability of the coexistence agreement to the marks at issue, which the applicant does not, moreover, claim it does because it draws no formal inferences as to the lawfulness of the decision in Case R 1884/2011-5 from the clerical error invoked.
55      In conclusion, the Board of Appeal was right to find that none of the factors relied on by the applicant could serve as express consent for the purposes of Article 53(3) of Regulation No 207/2009.
56      The first plea must therefore be rejected as unfounded.
The second plea, alleging infringement of Articles 8(1)(b) and 53(1)(a) of Regulation No 207/2009
57      Both in Case T‑544/12 and in Case T‑546/12, the applicant disputes, in essence, that the marks at issue are similar, that the goods are similar and, lastly and consequently, that there is a likelihood of confusion.
58      The marks which must be examined as to whether there is a likelihood of confusion are, in Case T‑544/12, which concerns an application for annulment of the decision in Case R 1883/2011-5, the earlier word mark PENTASA and the word mark PENSA PHARMA, and, in Case T‑546/12, which concerns an application for annulment of the decision in Case R 1884/2011-5, the earlier word mark PENTASA and the figurative mark pensa.
59      Under Articles 8(1)(b) and 53(1)(a) of Regulation No 207/2009, 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, an 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means ‘trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property’.
60      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 (judgment of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 70, and judgment of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 23; see also, by analogy, judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 17).
61      Furthermore, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment in CAPIO, cited in paragraph 60 above, EU:T:2008:338, paragraph 71; see also, by analogy, judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22; judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 16; and judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 60 above, EU:C:1999:323, paragraph 18).
62      That global assessment 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 (judgment of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48; judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 in the preamble to Regulation No 207/2009, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 26 and the case-law cited).
63      Furthermore, the global assessment 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 wording of Article 8(1)(b) of Regulation No 207/2009, (‘there exists a likelihood of confusion on the part of the public’), shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment in BÜRGER, cited in paragraph 62 above, EU:T:2012:432, paragraph 27; see also, by analogy, judgment in SABEL, cited in paragraph 61 above, EU:C:1997:528, paragraph 23).
64      In the context of the examination of whether there is a likelihood of confusion, 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 (judgment of 6 October 2005 in Medion, C‑120/04, ECR, EU:C:2005:594, paragraph 29, and order of 30 January 2014 in Industrias Alen v The Clorox Company, C‑422/12 P, ECR, EU:C:2014:57, paragraph 43).
65      It is true that, in certain circumstances, the overall impression conveyed to the relevant public by a composite trade mark may be dominated by one or more of its components, with the result that, if all the other components of the mark are negligible, the assessment of the similarity can be carried out solely on the basis of the dominant element. However, it cannot be deduced from that case-law, which relates to exceptional situations, that only the distinctive element of a mark that consists of a descriptive element and a distinctive element is decisive in assessing whether there is a likelihood of confusion (order in Industrias Alen v The Clorox Company, cited in paragraph 64 above, EU:C:2014:57, paragraph 44, and order of 15 January 2010 in Messer Group v Air Products and Chemicals, C‑579/08 P, EU:C:2010:18, paragraph 72).
66      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 (judgment in LA VICTORIA DE MEXICO, cited in paragraph 60 above, EU:T:2012:36, paragraph 37).
67      Lastly, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them. 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 in BÜRGER, cited in paragraph 62 above, EU:T:2012:432, paragraph 28 and the case-law cited; see also, by analogy, judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 60 above, EU:C:1999:323, paragraph 26).
68      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined.
The relevant public
69      In paragraph 16 of the decision in Case R 1883/2011-5 and paragraph 17 of the decision in Case R 1884/2011-5, the Board of Appeal found, first, that the relevant public consisted of consumers from the Benelux countries and French consumers respectively and, secondly, that, having regard to the nature of the goods and services, the level of attention of that public, which consisted of the general public and of health professionals, was higher than average.
70      That approach must be accepted.
71      In any event, as regards the interveners’ claims seeking a declaration that the relevant public’s level of attention is average as far as the goods and services at issue are concerned, it must be held that, as the interveners conceded at the hearing, to admit that the relevant public has such a level of attention would have no effect on the question of whether there is a likelihood of confusion in the present case.
The similarity of the signs
–       The visual similarity
72      In Case T‑544/12, it is apparent from paragraph 22 of the decision in Case R 1883/2011-5 that the Board of Appeal found that the marks at issue, namely the earlier word mark PENTASA and the word mark PENSA PHARMA, coincided at the level of their sequences of letters. It found, in essence, first, that the addition of the element ‘pharma’ to the element ‘pensa’ did not serve visually to differentiate the two signs at issue sufficiently, on account of the descriptiveness of the word ‘pharma’, and, secondly, that the sequence of letters ‘ta’ in the earlier word mark PENTASA likewise did not serve to differentiate that mark sufficiently from the element ‘pensa’ in the contested mark.
73      The applicant submits, first, that the Board of Appeal erred in disregarding the importance, from a visual standpoint, of the element ‘pharma’ in the contested mark under the pretext that that element is descriptive and non-distinctive and, secondly, that, even if only the first words in the marks at issue, namely the words ‘pentasa’ and ‘pensa’, were taken into account, there would also be significant differences between those marks. It infers from that that those marks are not similar, or at least that they should be considered to be similar to a low degree. It states, in that regard, that it ‘agrees’ with the findings of the Cancellation division.
74      In the first place, as the applicant submits, it must be held that the marks at issue differ visually owing to the presence of the word ‘pharma’ in the contested mark.
75      Although it is true, in that regard, that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see paragraph 63 above), the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a specific meaning or which resemble words known to him (see judgment of 10 July 2012 in Clorox v OHIM — Industrias Alen (CLORALEX), T‑135/11, EU:T:2012:356, paragraph 27, and judgment of 16 July 2014 in Endoceutics v OHIM — Merck (FEMIVIA), T‑324/13, EU:T:2014:672, paragraph 34).
76      In the present case, the relevant public will not therefore be able to disregard the element ‘pharma’ when it sees the sign PENSA PHARMA.
77      Furthermore, it must be borne in mind that the weak distinctive character of one element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the view of that public (see, by analogy, judgment in FEMIVIA, cited in paragraph 75 above, EU:T:2014:672, paragraph 36, and judgment in CLORALEX, cited in paragraph 75 above, EU:T:2012:356, paragraph 35).
78      That is so in the present case. The addition of the word ‘pharma’ to the word ‘pensa’ in the contested mark necessarily gives rise to a visual difference between it and the earlier mark, which consists only of the word ‘pentasa’. That is a fortiori the case because the element ‘pharma’ has a greater number of letters than the element ‘pensa’. In those circumstances, the element ‘pharma’ cannot be considered to be ‘negligible’, at least visually, for the purposes of the case-law referred to in paragraphs 65 and 66 above.
79      In the second place, although the assessment of the likelihood of confusion must be based on the overall impression created by the marks at issue, it may not, however, be deduced from that, contrary to what the applicant maintains, that the same importance must necessarily be given to all the elements of the sign PENSA PHARMA, namely to the word ‘pensa’, on the one hand, and the word ‘pharma’ on the other.
80      On the contrary, according to the settled case-law referred to in paragraph 63 above, it is important, for the purposes of assessing the likelihood of confusion so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, to bear in mind their distinctive and dominant elements in the overall impression created by the signs at issue (see, to that effect, judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35, and judgment in SABEL, cited in paragraph 61 above, EU:C:1997:528, paragraph 23).
81      In the present case, the dominant element visually in the mark PENSA PHARMA is the element ‘pensa’. It is settled case-law that the consumer normally attaches more importance to the first part of words (judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and judgment of 7 November 2013 in IBSolution v OHIM — IBS (IBSolution), T‑533/12, EU:T:2013:582, paragraph 38). That is a fortiori the case where, as in the present case, the contested mark consists of two words.
82      It must be held that there is a certain degree of similarity between the word ‘pensa’ in the contested mark and the word ‘pentasa’ of which the earlier mark consists, inasmuch as the first three letters and the last two letters in those words are identical. They differ only in the sequence of letters ‘ta’ in the middle of the earlier mark.
83      In that regard, contrary to what the applicant maintains, the sequence of letters ‘ta’ in the middle of the earlier mark does not make it possible to disregard any visual similarity between the marks at issue. On the one hand, the first word in the contested mark, namely the word ‘pensa’, and the word ‘pentasa’ of which the earlier mark consists have the same letters occupying a similar position at the beginning and the end of the words (see, to that effect, judgment of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraph 48) and, on the other hand, they have the same first part which is likely to catch the consumer’s attention more than the parts that follow (see, to that effect, judgment in MUNDICOR, cited in paragraph 81 above, EU:T:2004:79, paragraph 81).
84      In those circumstances, it must be held that there is a certain degree of similarity between the marks at issue, albeit low, which the applicant, moreover, admits incidentally in paragraphs 19 and 22 of the application, in concluding its arguments on the visual comparison of the signs.
85      That finding cannot be invalidated by the case-law cited by the applicant.
86      First in the judgment of 14 July 2011 in Winzer Pharma v OHIM — Alcon (OFTAL CUSI) (T‑160/09, EU:T:2011:379), on which the applicant relies, the Court found that the second element in the sign at issue, namely the element ‘cusi’, was highly distinctive in relation to the word element ‘oftal’ (see paragraphs 53 and 93 of that judgment). The same cannot be true of the element ‘pharma’ in the sign PENSA PHARMA in the present case, if only because the element ‘pensa’ is dominant over the element ‘pharma’ in the impression created by the contested mark (see paragraph 81 above).
87      Secondly, the analogy which the applicant draws between the visual comparison of the signs carried out by the Board of Appeal in the present case and the comparison of the signs carried out in the judgment of 12 December 2002 in Vedial v OHIM — France Distribution (HUBERT) (T‑110/01, ECR, EU:T:2002:318) is irrelevant. In that case, the sign in respect of which the contested mark had been registered was significantly more distinctive visually than the sign PENSA PHARMA. It must be borne in mind, in that regard, that it was not a simple word sign, as in the present case, but an illustration representing clearly the standing bust of a chef, beaming and with his right arm raised, namely:
88      Lastly, the applicant’s argument that neither of the marks at issue to which the decision in Case R 1883/2011-5 relates claimed any particular font and that they are used in a different way must be rejected as irrelevant. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from the registration of a word mark relates to the word mentioned in the application for registration and not to any specific graphic or stylistic elements that that mark might have (judgment of 22 May 2008 in Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, EU:T:2008:165, paragraph 43, and judgment of 25 June 2013 in Aldi v OHIM — Dialcos (dialdi), T‑505/11, EU:T:2013:332, paragraph 65).
89      Consequently, the alleged differences in the use of the marks at issue put forward by the applicant cannot be taken into account.
90      In Case T‑546/12, it is apparent from paragraph 24 of the decision in Case R 1884/2011-5 that the Board of Appeal found that the word ‘pensa’ was the most distinctive element and the component which visually dominated the impression given by the contested mark and that that word was similar to the word ‘pentasa’ of which the earlier mark consists. However, it took the view that the ‘figurative features’ of the contested mark had to be given some weight and deduced from that that there was a low degree of visual similarity between the marks at issue.
91      The applicant disputes that analysis, submitting that there is no visual similarity between the marks at issue. It claims, first, that the figurative sign pensa is visually different from the word sign PENTASA on account, primarily, of the sequence of letters ‘ta’ in the earlier mark. It submits that that sequence of letters plays a particularly differentiating role because the marks at issue are very short and because it is placed in the middle of the word element of which the earlier mark consists. It maintains that that sequence of letters thus gives rise to a significant graphic difference between the marks at issue.
92      The applicant claims, secondly, that the figurative element that accompanies the word element ‘pensa’ in the contested mark reinforces that difference. It states, first of all, that that figurative element is positioned at the same level as the word element (so that it cannot be considered to be a mere decorative element of the packaging) and before it, and thus attracts the attention of the relevant public first. Furthermore, it submits that that figurative element is easy to memorise inasmuch as it is neither too complicated nor too simple.
93      In the first place, it has been stated in paragraph 83 above that the sequence of letters ‘TA’ in the middle of the earlier mark does not make it possible to disregard any similarity between the marks at issue in Case T‑544/12, namely the earlier word mark PENTASA and the word mark PENSA PHARMA. The same is true in the present case; the sequence of letters ‘ta’ in the earlier mark is not sufficient to affect the similarity between the word sign PENTASA and the figurative sign pensa which results from the fact that they have five letters in common. It cannot be held, as the applicant maintains, that there is no similarity between the marks at issue as a result of that difference in spelling.
94      In the second place, as regards the allegedly differentiating nature of the figurative additions to the contested mark, it must be borne in mind that the case-law has confirmed on a number of occasions that where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, as the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (see judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 54 and the case-law cited).
95      In that regard, contrary to what the applicant claims, the positioning and the shape of the figurative element in the figurative sign pensa cannot differentiate it sufficiently from the interveners’ mark, inasmuch as that element consists only of a circular shape surrounding the first letter and a font in a different colour. In those circumstances, the fact that that figurative element is on the same line as the word element ‘pensa’ is of no particular importance.
96      By way of comparison, as has already been stated in paragraph 87 above, in the judgment in HUBERT, cited in paragraph 87 above, (EU:T:2002:318), which is relied on by the applicant, the sign in respect of which the contested mark had been registered was significantly more distinctive than that in respect of which the earlier mark SAINT-HUBERT 41 had been registered. It was an illustration representing clearly the standing bust of a chef, beaming and with his right arm raised, and not a simple reproduction, albeit stylised, of a word sign.
97      The Board of Appeal was therefore right in finding, in paragraph 24 of the decision in Case R 1884/2011-5, that the contested mark was dominated visually by the word element ‘pensa’, which was similar to the sign PENTASA in respect of which the earlier mark had been registered.
98      In conclusion, it follows from the above that the marks at issue in Case T‑544/12 are visually similar, even if only to a low degree, as are the marks at issue in Case T‑546/12.
–       The phonetic similarity
99      In Case T‑546/12, it is apparent from paragraph 25 of the decision in Case R 1884/2011-5 that the Board of Appeal found that the earlier word mark PENTASA and the figurative mark pensa were phonetically similar on account of the similarity of the words ‘pensa’ and ‘pentasa’. It found that the syllable ‘ta’ in the earlier mark did not contribute sufficiently to that mark to allow a phonetic differentiation.
100    The applicant disputes that approach, claiming, in essence, that the Board of Appeal did not sufficiently take into account the differentiating nature, at the phonetic level, of the syllable ‘ta’ in the earlier mark. In that regard, it submits that the marks at issue will be pronounced differently on account, inter alia, of the different number of syllables and of differences in stress resulting from the syllable ‘ta’ in the earlier mark.
101    However, the fact that the word ‘pensa’ in the figurative sign pensa consists of two syllables, whereas the sign PENTASA consists of three syllables, does not rule out a certain degree of phonetic similarity between those signs (see, to that effect, judgment in Ferrero Deutschland v OHIM, cited in paragraph 83 above, EU:C:2008:234, paragraph 48). There is a significant degree of similarity between that word and the sign PENTASA of which the earlier mark consists, inasmuch as it has the same beginning as that mark, namely the syllable ‘pen’, and inasmuch as those signs contain five identical letters which will be pronounced in the same order.
102    The same is true of the fact that the sign PENTASA includes the syllable ‘ta’, which is not in the contested mark, in the middle of that sign. At the phonetic level, as at the visual level, the consumer generally pays greater attention to the beginning of a sign (see, by analogy, judgment in MUNDICOR, cited in paragraph 81 above, EU:T:2004:79, paragraph 83).
103    Lastly, the applicant’s argument that, in the sign PENTASA the stress lies on the second syllable, namely the syllable ‘ta’, which is not in the contested mark, is unfounded. As the interveners submit, in accordance with the accepted rules of French pronunciation it is the last syllable which is generally stressed (except in the case of words which end in the vowel ‘e’).
104    The Board of Appeal was therefore right in finding, in the decision in Case R 1884/2011-4, that the marks at issue were phonetically similar in spite of the presence of the syllable ‘ta’ in the middle of the earlier mark.
105    In Case T‑544/12, it is apparent from paragraph 23 of the decision in Case R 1883/2011-5 that the Board of Appeal found that the earlier word mark PENTASA and the word mark PENSA PHARMA were phonetically similar on the premise that the word ‘pharma’ in the contested mark might not be pronounced due to its descriptiveness and that the syllable ‘ta’ in the middle of the earlier mark did not, on its own, sufficiently differentiate the marks at issue from a phonetic standpoint.
106    The applicant disputes that approach. It maintains that the Board of Appeal erred in disregarding the word ‘pharma’ in its analysis of the similarity between the signs at the phonetic level. As in Case T‑546/12, it also submits that the Board of Appeal did not duly take into account the syllable ‘ta’ in the earlier mark.
107    However, as has been stated in paragraphs 81, 83 and 102 above, the relevant public generally pays greater attention to the beginning of a sign than to the end. In those circumstances, that public will focus its attention on the element ‘pensa’ in the contested mark and not on the element ‘pharma’ in that mark. It may be presumed that that public, which generally tends to contract long marks consisting of two words into a single word, will not pronounce the word ‘pharma’, inasmuch as that word is superfluous because of the nature of the goods and services covered by the contested mark, namely pharmaceutical goods and services (see, to that effect, judgment of 30 November 2011 in SE-Blusen Stenau v OHIM — Sport Eybl & Sports Experts (SE© SPORTS EQUIPMENT), T‑477/10, EU:T:2011:707, paragraph 55, and judgment of 3 July 2013 in GRE v OHIM — Villiger Söhne (LIBERTE american blend against a red background), T‑206/12, EU:T:2013:342, paragraph 44).
108    As was found by the Board of Appeal, the earlier mark PENTASA and the element ‘pensa’ in the contested mark are indeed phonetically similar. The syllable ‘ta’, which is in the middle of the earlier mark, is not capable of affecting that similarity (see paragraphs 101 to 103 above). It is not, moreover, established that in Dutch the syllable in the middle is stressed.
109    The Board of Appeal was therefore right in finding, in the decision in Case R 1883/2011-5, that the marks at issue were phonetically similar, in spite of the addition of the element ‘pharma’ to the element ‘pensa’ in the contested mark.
110    In conclusion, it follows from the above that the marks at issue in Case T‑544/12 are phonetically similar, as are the marks at issue in Case T‑546/12.
–       The conceptual similarity
111    In Case T‑544/12, it is apparent from paragraph 24 of the decision in Case R 1883/2011-5 that the Board of Appeal found, in essence, that neither of the marks at issue (the earlier word mark PENTASA and the word mark PENSA PHARMA) had any meaning in the languages spoken in the Benelux countries and that the addition of the word ‘pharma’ to the word ‘pensa’ in the contested mark had no effect at the level of the conceptual comparison of the signs inasmuch as that word was descriptive in respect of the goods and services at issue.
112    In Case T‑546/12, it is apparent from paragraph 26 of the decision in Case R 1884/2011-5 that the Board of Appeal also stated that neither of the signs at issue, namely the word sign PENTASA and the figurative sign pensa, had any discernible meaning in French and found that no conceptual comparison was possible.
113    The applicant disputes those findings by stating that there are ‘clearly’ differences between the marks at issue from a conceptual standpoint, inasmuch as, in particular, the sign PENTASA is derived from the word ‘penta’, which designates the number 5 in Greek and is ‘perfectly understood’ by the relevant public in any Member State, whereas the signs in respect of which the contested marks have been registered consist of a fantasy term, namely the term ‘pensa’, and, as regards the decision in Case R 1883/2011-5, of a term with a powerful meaning, namely the term ‘pharma’.
114    It must be stated that it is apparent from the case-law that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract phonetic and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (judgment of 12 January 2006 in Ruiz-Picasso and Others v OHIM, C‑361/04 P, ECR, EU:C:2006:25, paragraph 20, and judgment of 23 March 2006 in Mülhens v OHIM, C‑206/04 P, ECR, EU:C:2006:194, paragraph 35).
115    In the present case, as regards, first, the earlier mark PENTASA, it must be borne in mind that the Court has held, as regards the conceptual similarity between the marks TRIVASTAN and TRAVATAN (covering goods in Class 5) that ‘[e]ven if the [relevant] public could understand “tri” as being a reference to “triple”, it is not obvious what “triple” refers to.’ (judgment of 22 September 2005 in Alcon v OHIM — Biofarma (TRAVATAN), T‑130/03, ECR, EU:T:2005:337, paragraph 73).
116    In the same way, in a subsequent judgment, the Court held that ‘[from a] conceptual [standpoint], it [had to] be noted … that it [was] not possible to carry out a conceptual comparison between the marks at issue, since neither the term “tribion” nor the term “trubion” [had] any meaning in the languages of the European Union’, that ‘[i]n this respect, it [was] true that … the prefix “tri” [was] derived from a widely used Greek root meaning “three”’, but that ‘that observation [did] not apply in [that] case, since the word “bion” does not have any meaning on its own or any meaning which could be linked to the concept of “three”’ (judgment of 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 53).
117    Those findings apply a fortiori in the present case, even if the relevant public were able to understand that the prefix ‘penta’ refers to the number 5, which the applicant has not proved (see, by analogy, judgment of 22 May 2012 in Aitic Penteo v OHIM — Atos Worldline (PENTEO), T‑585/10, EU:T:2012:251, paragraph 71). Furthermore, it must be stated that the suffix ‘asa’ does not, for the average user of the goods at issue, have any specific meaning which may be clearly linked to a concept connected with that number (judgment of 9 April 2014 in Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, EU:T:2014:194, paragraph 55). It is apparent in that regard from paragraph 49 of the judgment in OCTASA, that the meaning of the sign PENTASA is more likely to be found in the active ingredient of the product marketed under the earlier mark, namely mesalazine. According to paragraph 49 of that judgment, that active ingredient may be referred to by the scientific names ‘5-aminosalicylic’ or ‘5-ASA’.
118    Lastly, it must be held that the applicant’s argument that the element ‘pentasa’ refers to the ingestion period of the medicinal product, which is five hours, is not substantiated by any evidence. In that regard, it must be recalled that the leaflet which the applicant relied on in support of that argument has been rejected as inadmissible (see paragraph 26 above).
119    It follows that the earlier mark PENTASA does not have a meaning which is clear enough to differentiate it from the contested marks.
120    The same conclusion must be drawn as regards, secondly, the word ‘pensa’ in the contested marks. That word does not have any meaning that is known to the relevant public, whether it is considered on its own or together with the word ‘pharma’.
121    Consequently, it follows from the foregoing that neither of the marks at issue in Case T‑544/12 and neither of the marks at issue in Case T‑546/12 has any clear and specific meaning that the relevant public would be capable of grasping immediately (see paragraph 114 above).
122    As a general conclusion from the foregoing considerations relating to the similarity of the signs, it must be held that:
–        visually, there is a low degree of similarity between the contested marks and the mark PENTASA;
–        phonetically, the contested marks and the mark PENTASA are similar;
–        conceptually, neither the contested marks nor the mark PENTASA have any clear meaning for the relevant public.
123    That finding cannot be called into question by the ‘summary chart’ which the applicant has drawn up by way of illustration and which consists of judgments relating to goods in Class 5 of the Nice Agreement.
124    First, by confining itself to listing examples from the case-law, without even citing the paragraphs of the judgments which correspond to its claims, the applicant does not explain to what extent each of those judgments would be capable of showing that there is no likelihood of confusion in the present case.
125    Secondly, it must be stated that those judgments refer to factual situations that are different from that at issue in the present case and cannot therefore constitute precedents that are sufficient to establish that there is no similarity between the marks at issue in the present joined cases. The judgments referred to by the applicant are characterised by differences between the signs at issue which are capable of affecting the likelihood of confusion, whether they are differences between their first syllable or specific differences in pronunciation created by the addition or removal of certain syllables in one sign as compared with the other (judgment of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraphs 53 to 57; judgment of 8 July 2009 in Laboratorios Del Dr. Esteve v OHIM — Ester C (ESTER-E), T‑230/07, EU:T:2009:252, paragraph 48; judgment of 23 September 2009 in GlaxoSmithkline and Others v OHIM — Serono Genetics Institute (FAMOXIN), T‑493/07, T‑26/08 and T‑27/08, EU:T:2009:355, paragraph 69; judgment of 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, ECR, EU:T:2010:520, paragraph 51; judgment of 7 June 2012 in Meda Pharma v OHIM — Nycomed (ALLERNIL), T‑492/09 and T‑147/10, EU:T:2012:281, paragraph 41; and judgment of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 36).
The similarity of the goods
126    The applicant disputes, in the present joined cases, that there is a similarity between the pharmaceutical preparations covered by the earlier mark and the goods ‘that would bear the sign PENSA PHARMA’.
127    The applicant states, first, that specialists and patients are perfectly used to identifying different pharmaceutical products, even those which are for the same therapeutic use and belong to different undertakings, by similar names, which limits any likelihood of confusion. It maintains, secondly, that the marks at issue cover pharmaceutical products with different therapeutic indications, in so far as the goods marketed by the interveners under the earlier mark are prescribed for ulcerative colitis and Crohn’s disease, which has absolutely nothing to do with the products ‘that would bear the sign PENSA PHARMA’. It relies in that regard on a series of judgments of the General Court which excludes any likelihood of confusion between medicinal products where the therapeutic indications are different. Thirdly, it submits that the target public for the goods at issue is different and that that public is perfectly capable of distinguishing between the goods covered by the marks at issue. Fourthly, it submits that the level of attention of the public at which the pharmaceutical products are aimed is higher than for other goods.
128    As far as the applicant’s arguments in respect of the different therapeutic indications and the particularities of the goods at issue are concerned, it is, as the Board of Appeal pointed out, apparent from the case-law that the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate to the description of the goods covered by the earlier mark and not to the goods for which the trade mark is actually used unless, following a request for proof of genuine use of the earlier mark, such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (see, by analogy, judgment of 13 December 2012 in Natura Selection v OHIM — Ménard (natura), T‑461/11, EU:T:2012:693, paragraph 31 and the case-law cited).
129    It must be stated in that regard that the applicant never officially requested proof of genuine use in accordance with Article 57(2) and (3) of Regulation No 207/2009.
130    Furthermore, it must be borne in mind that the comparison of the goods must not relate to the goods in respect of which the proprietor of the contested mark envisages using that mark; an analysis of whether there will be a likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, by analogy, judgment of 15 March 2007 in T.I.M.E. ART v OHIM, C‑171/06 P, EU:C:2007:171, paragraph 59, and judgment of 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 63). Consequently, the use which the applicant intends to make of the mark applied for is irrelevant. OHIM may only take account of the list of goods applied for as it appears in the trade mark application concerned, subject to any amendments thereto (see, by analogy, judgment of 13 April 2005 in Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport), T‑286/03, EU:T:2005:126, paragraph 33; see also, to that effect, judgment of 22 March 2007 in Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, ECR, EU:T:2007:96, paragraph 89, and judgment of 1 July 2009 in Perfetti Van Melle v OHIM — Cloetta Fazer (CENTER SHOCK), T‑16/08, EU:T:2009:240, paragraph 34). Consequently, if the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (judgment in natura, cited in paragraph 128 above, EU:T:2012:693, paragraph 33 and the case-law cited).
131    In the light of the foregoing, OHIM was justified in finding that the ‘pharmaceutical preparations’ in Class 5 which were covered by the marks at issue were identical.
132    In those circumstances, all the judgments referred to by the applicant, inasmuch as they deal with the principle of genuine use of the mark, are irrelevant. In the same way, as OHIM submits, the applicant’s arguments relating to the different therapeutic indications of the medicinal products for which it intends to use its mark, the different active substances in them, the different target public for them and the higher level of attention of the relevant consumers are irrelevant.
133    As regards the other goods (sanitary preparations for medical purposes, dietetic substances adapted for medical use, plasters, materials for dressings, disinfectants) with regard to which the mark is contested, as resulting from the restriction which took place on 1 December 2009 (see paragraph 13), it must be noted that the applicant has not provided any specific arguments tending to show that there is no similarity between them and the ‘pharmaceutical preparations’ covered by the registration of the earlier mark. The Board of Appeal’s findings as to the similarity of the goods covered by the marks at issue must therefore be upheld.
134    The Court has already held that the other goods in Class 5 covered by the contested mark may be regarded as similar or identical to the ‘pharmaceutical preparations’ covered by the earlier mark. This is true:
–        of sanitary preparations for medical purposes (judgment of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, paragraphs 29 to 31, and judgment of 15 March 2012 in Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, EU:T:2012:124, paragraph 44);
–         and of dietetic substances adapted for medical use (judgment in TRUBION, cited in paragraph 116 above, EU:T:2009:507, paragraph 32).
135    The same is true of materials for dressings, plasters and disinfectants which have a strong complementary connection with pharmaceutical preparations in the sense that those goods have the same purpose or intended use (medical care), are aimed at the same consumers (end consumers and professionals in the health sector) and use the same distribution channels.
136    Lastly, the medical services and consultancy in the field of pharmacy in Class 44 are complementary to the pharmaceutical preparations in Class 5 (judgment of 2 June 2010 in Procaps v OHIM — Biofarma (PROCAPS), T‑35/09, EU:T:2010:220, paragraphs 43 to 45). They are therefore linked to those goods by a certain degree of similarity. In that regard, it must be held that the applicant does not dispute that the services in Class 44 covered by its application for registration are similar to the ‘pharmaceutical preparations’ in Class 5 covered by the earlier mark as it has not put forward any arguments relating to that issue.
137    In those circumstances, the Board of Appeal’s analysis in the contested decisions must be confirmed inasmuch as it found that the goods and services at issue were identical or similar.
The likelihood of confusion
138    The applicant submits, in the first place, that neither the nature of the goods and their particularities nor the high level of attention of ‘patients’ and professionals in choosing the goods at issue were sufficiently taken into account in the contested decisions. It submits, in the second place, that the choice of an earlier French right for the decision in Case R 1884/2011-5 and of an earlier Benelux right in the decision in Case R 1883/2011-5, instead of the earlier Spanish or Italian rights, inter alia, is arbitrary. It claims, in the third place, that the element ‘pharma’ in the mark PENSA PHARMA should have been taken into account in the comparison of the signs carried out in the latter decision. It observes, in the fourth place, that the fact that the business name of the proprietor of the contested marks is on the whole the same as the word element in those marks, namely the element ‘pensa pharma’ or the element ‘pensa’, should have been taken into account in those decisions and that, even if the action is dismissed, the goods manufactured by that proprietor will, in any event, include the words ‘Pensa Pharma’ in the explanatory leaflet in respect of the goods marketed under those marks.
139    It must be borne in mind that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment in MATRATZEN, cited in paragraph 62 above, EU:T:2002:261, paragraph 45). The likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see paragraph 61 above). That global assessment thus 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 (see paragraph 62 above).
140    Furthermore, 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 the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 18).
141    Lastly, it is possible that mere aural similarity between trade marks may create a likelihood of confusion (judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 60 above, EU:C:1999:323, paragraph 28).
142    In the present case, it has been held that:
–        the goods and services covered by the marks at issue are identical or similar (see paragraph 137 above);
–        the signs covered by the marks at issue are visually similar, albeit to a low degree (see paragraph 122 above);
–        the signs covered by the marks at issue are phonetically similar (see paragraph 122 above);
–        conceptually, neither the contested marks nor the mark PENTASA have any clear meaning for the relevant public (see paragraph 122 above).
143    Lastly, it must be pointed out that the Board of Appeal found, in paragraph 34 of the decision in Case R 1883/2011-5 and in paragraph 39 of the decision in Case R 1884/2011-5 that the earlier mark PENTASA had acquired a highly distinctive character through use in the Benelux countries as well as in France.
144    The applicant submits in that regard, first, ‘that none of the previous decision considered that [the mark PENTASA] had a reputation, but merely that it was used’ and, secondly, that, although a trademark may become highly distinctive through use in a given territory, that does not automatically contribute to the creation of a likelihood of confusion in that territory. It relies in that regard on the judgment in OFTAL CUSI, cited in paragraph 86 above, (EU:T:2011:379).
145    However, it must be stated, first, that, in the contested decisions, the Board of Appeal did indeed find that the earlier mark has acquired a ‘highly’ distinctive character or ‘enhanced’ distinctiveness through use (paragraph 34 of the decision in Case R 1883/2011-5 and paragraph 39 of the decision in Case R 1884/2011-5), and, secondly, that it is not apparent from the judgment in OFTAL CUSI, cited in paragraph 86 above, (EU:T:2011:379), by contrast with the present case, that the Board of Appeal found that the earlier mark had acquired enhanced distinctiveness through use (judgment in OFTAL CUSI, paragraphs 28 and 52).
146    The arguments put forward by the applicant do not therefore make it possible to invalidate the Board of Appeal’s finding that the earlier mark has acquired a highly distinctive character through use, both in French territory and in the territory of the Benelux countries.
147    It follows that, considered cumulatively, the degree of similarity between the signs at issue and the degree of similarity between the goods and services covered by those signs are sufficiently high to hold that there is a likelihood of confusion (judgment in MATRATZEN, cited in paragraph 62 above, EU:T:2002:261, paragraph 45).
148    Accordingly, the low degree of visual similarity between the signs at issue is offset by the identity or similarity of the goods or services which they cover and the highly distinctive character of the earlier trade mark (judgment in Canon, cited in paragraph 60 above, EU:C:1998:442, paragraph 18).
149    In those circumstances, the Board of Appeal was right to find, in paragraph 34 of the decision in Case R 1883/2011-5 and paragraph 40 of the decision in Case R 1884/2011-5, that there was a likelihood of confusion between the marks at issue.
150    The existence of a likelihood of confusion is not invalidated by the arguments put forward by the applicant.
151    First, as has been stated in paragraphs 128 to 130 above, the applicant’s arguments in respect of the different therapeutic indications and the particularities of the goods covered by the marks at issue are irrelevant, inasmuch as the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate, unless there is a request for proof of genuine use, to the description of the goods covered by the marks at issue and not to the goods in respect of which those marks are actually used or, a fortiori, in respect of which the use is envisaged.
152    Secondly, according to the case-law, even if the relevant public consists of persons whose level of attention may be considered to be high, as the Board of Appeal found in the present case, that is not sufficient, given the similarity between the goods and the signs at issue, to exclude the possibility that that public might believe that those goods come from the same undertaking or, as the case may be, from economically-linked undertakings (judgment of 17 October 2006 in Armour Pharmaceutical v OHIM — Teva Pharmaceutical Industries (GALZIN), T‑483/04, ECR, EU:T:2006:323, paragraph 80). That is particularly so if the earlier mark is highly distinctive. In addition, it should be borne in mind that the fact that that public will pay more attention to the identity of the producer or supplier of the product or service which it wishes to purchase does not, however, mean that it will examine the mark before it down to the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see judgment in FEMIVIA, cited in paragraph 75 above, EU:T:2014:672, paragraph 48 and the case-law cited).
153    Thirdly, as has been stated in paragraph 42 above, the Board of Appeal was justified in basing its examination of the likelihood of confusion on the earlier marks registered in the Benelux countries and France, and not on the marks registered in Spain and Italy.
154    Fourthly, contrary to what the applicant submits in Case T‑544/12 in each of its arguments in respect of the visual, phonetic and conceptual similarity and also at the stage of the analysis of the likelihood of confusion, the addition of the element ‘pharma’ to the element ‘pensa’ in the sign PENSA PHARMA does not affect the finding that there is a likelihood of confusion between the marks at issue, even if, visually and phonetically, that addition is capable of adding an element of differentiation.
155    The element ‘pharma’ in the sign PENSA PHARMA will be perceived by the relevant public in the Benelux countries as being descriptive and devoid of any distinctive character and therefore as being non-dominant, inasmuch as it is, in essence, an abbreviation of the word ‘pharmaceutical’, which is a very well-known term designating companies that belong to the pharmaceutical industry (judgment of 17 June 2009 in Korsch v OHIM (PharmaResearch), T‑464/07, EU:T:2009:207, paragraph 33).
156    The term ‘pharma’ in the sign PENSA PHARMA does not therefore contribute to the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (judgment of 18 June 2002 in Philips, C‑299/99, ECR, EU:C:2002:377, paragraph 30, and judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 27).
157    In those circumstances, the term ‘pharma’ in the sign PENSA PHARMA cannot be capable of making on consumers or health professionals a particular impression which they will remember and which is capable of differentiating the goods and services with which that term is associated from the goods covered by the earlier mark. In that regard, it should be pointed out, in the context of the global assessment of the likelihood of confusion, that, because the average consumer retains only an imperfect image of the mark, the predominant element of the mark in question is of major importance (judgment of 8 March 2005 in Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, EU:T:2005:82, paragraph 40).
158    The addition of the term ‘pharma’ to the term ‘pensa’ in the sign PENSA PHARMA for which the contested mark in Case T‑544/12 was registered is not therefore capable of affecting the likelihood of confusion between that mark and the earlier mark PENTASA.
159    Fifthly, as regards the fact that the business name of the proprietor of the contested marks is on the whole the same as the word element in those marks and that therefore, even if the action is dismissed, the goods manufactured by that proprietor will include the words ‘Pensa Pharma’ in the ‘compulsory details’ in respect of the goods marketed under those marks, it must be pointed out, first, that it is not for the Court to draw inferences from the possible continued existence of the same marks, after a decision declaring them invalid, through their reproduction as a business name. In accordance with the scope of the dispute set out in the application, the Court’s examination must be limited to examining whether there is a likelihood of confusion between the marks at issue as registered.
160    Secondly, it must be stated that the applicant does not in any way explain to what extent the presence of the words ‘pensa’ and ‘pharma’ as a business name in the ‘compulsory details’ in respect of the goods which it markets under the contested marks would decrease the likelihood of confusion between the marks at issue and, in particular, the likelihood that the goods sold under the earlier mark PENTASA would be confused with the goods sold under the mark PENSA PHARMA.
161    In those circumstances, the second plea must be rejected as unfounded and, consequently, the actions must be dismissed in their entirety.
Costs
162    Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the interveners.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the actions;
2.      Orders Pensa Pharma, SA, to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 3 June 2015.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
Admissibility
The documents submitted for the first time before the General Court
The arguments put forward for the first time at the hearing
Substance
The first plea, alleging infringement of Article 53(3) of Regulation No 207/2009
The alleged peaceful coexistence in Spain and Italy
The withdrawal of the oppositions
The coexistence agreement
The second plea, alleging infringement of Articles 8(1)(b) and 53(1)(a) of Regulation No 207/2009
The relevant public
The similarity of the signs
– The visual similarity
– The phonetic similarity
– The conceptual similarity
The similarity of the goods
The likelihood of confusion
Costs
* Language of the case: English.