JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
24 October 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark SALOSPIR — Earlier EU figurative marks representing coloured stripes and earlier national marks Aspirin — Relative grounds for refusal — Similarity of the signs –– Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Reputation –– Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) — Use of a sign in the course of trade of more than mere local significance — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001))
In Case T‑261/17,
Bayer AG, established in Leverkusen (Germany), represented by V. von Bomhard and J. Fuhrmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, S. Pétrequin and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO and intervener before the Court, being
Uni-Pharma Kleon Tsetis, Farmakeutika Ergastiria AVEE, established in Kifisia (Greece), represented by C. Chrysanthis, P.-V. Chardalia and A. Vasilogamvrou, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 17 February 2017 (Case R 2444/2017-4), relating to opposition proceedings between Bayer and Uni-Pharma Kleon Tsetis, Farmakeutika Ergastiria,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,
Registrar: X. Lopez Bancalari, Administrator,
having regard to the application lodged at the Court Registry on 5 May 2017,
having regard to the response of EUIPO lodged at the Court Registry on 18 July 2017,
having regard to the response of the intervener lodged at the Court Registry on 6 July 2017,
further to the hearing on 19 April 2018,
gives the following
Judgment
Background to the dispute
1        On 28 November 2013, the intervener, Uni-Pharma Kleon Tsetis, Farmakeutika Ergastiria AVEE, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The mark for which registration was sought consists of the word element ‘salospir’ and of the figurative elements in ‘green, shades of green, white, black’. It is represented as follows:
3        The goods in respect of which registration was sought are in Class 5 within the meaning 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 to the following description: ‘Pharmaceuticals’.
4        The trade mark application was published in European Union Trade Marks Bulletin No 4/2014 of 9 January 2014.
5        On 9 April 2014, the applicant, Bayer AG, lodged an opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based, in the first place, on the following two earlier German marks (‘the earlier German marks’):
–        trade mark registered under number 36433:
–        trade mark registered under number DD 618 274:
Aspirin
7        The opposition was based, in the second place, on the following six marks (‘the earlier EU figurative marks’):
–        trade mark registered under number 7007008:
–        trade mark registered under number 1814383:
–        trade mark registered under number 7007801:
–        trade mark registered under number 7017049:
–        trade mark registered under number 7007792:
–        trade mark registered under number 7017015:
8        The opposition was based, in the third place, on the following non-registered sign (‘the non-registered sign’).
9        The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009 (now Article 8(1)(b), (4) and (5) of Regulation 2017/1001).
10      On 29 October 2015, the Opposition Division rejected the opposition in its entirety.
11      On 9 December 2015, the applicant filed an appeal with EUIPO, on the basis of Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
12      By decision of 17 February 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, the Board held in paragraphs 22, 30 and 32 of the contested decision, that the mark applied for was different from the earlier German marks and from the earlier EU figurative marks, set out in paragraphs 6 and 7 above. In paragraphs 35 to 45 of the contested decision, it held that the applicant had not proved that German law granted protection to the non-registered sign, mentioned in paragraph 8 above.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs incurred by EUIPO.
15      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        in the alternative, in the event that the Court should annul the contested decision, refer the case back to EUIPO for further examination;
–        order the applicant to pay the costs.
Law
Admissibility of the new evidence submitted by the applicant before the General Court
16      EUIPO argues that Annexes A8 and A9 to the application were not submitted during the administrative procedure before EUIPO. Accordingly, those documents are inadmissible.
17      Annex A8 consists of a presentation dated 16 September 2014 concerning surveys as evidence in trade mark cases, which was not produced before EUIPO. Annex A9 reports the results of a survey concerning the reputation of certain pharmaceutical preparations in Germany, conducted in January 2017, and does not appear in the administrative file either.
18      Accordingly, those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the 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, without it being necessary to assess their probative value (judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19).
19      As regards Annex A8, the applicant argues that it concerns a ‘standard and universally recognised’ element of the methodology that should govern consumer recognition surveys, namely the fact that it is first necessary to evaluate the relevant universe and find out which consumers are at least familiar to some degree with the object in the relevant product context. In so far as the applicant intends, by that argument, to prove a matter of common knowledge, it should be borne in mind that, according to the case-law, an applicant is entitled to produce documents before the Court as evidence of the accuracy of a matter of common knowledge which was not established in the decision of the body of EUIPO contested before the Court (see, to that effect, judgment of 20 June 2012, Kraft Foods Schweiz v OHIM — Compañía Nacional de Chocolates (CORONA), T‑357/10, not published, EU:T:2012:312, paragraph 16 and the case-law cited). However, it must be held that Annex A8 is not intended to prove a ‘matter of common knowledge’. The accuracy of the allegedly ‘standard and universally recognised’ element of the methodology governing consumer recognition surveys is strongly contested both in the contested decision and by the intervener. Thus, for example, the intervener, relying on the literature on the subject, criticises the methodology followed during a survey on the neutral Aspirin packaging produced by the applicant, asserting that respondents should not be informed in advance of the category of goods covered by the survey.
20      The applicant’s argument that Annex A9 is admissible cannot be accepted either, because it seeks to contest an assessment of the Board of Appeal. The case-law establishes that the principle that it is not the Court’s function to review the facts in the light of documents produced for the first time before it is of particular application when the purpose of those documents is to challenge assessments made by the Board of Appeal (see judgment of 23 March 2017, Vignerons de la Méditerranée v EUIPO — Bodegas Grupo Yllera (LE VAL FRANCE), T‑216/16, not published, EU:T:2017:201, paragraph 41 and the case-law cited).
21      Consequently, the evidence presented by the applicant by means of Annexes A8 and A9 to the application must be declared inadmissible.
Substance
22      In support of its action, the applicant relies on three pleas in law, alleging infringement of, respectively, Article 8(1)(b), Article 8(5) and Article 8(4) of Regulation No 207/2009.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
23      In the context of this plea, the applicant argues that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in the comparison (i) between the mark applied for and the earlier German marks (first part) and (ii) between the mark applied for and the earlier EU figurative marks (second part).
24      It is appropriate to start by examining the second part of the first plea in law.
The second part of the first plea
25      The marks at issue are the following:
Mark applied for
Earlier EU figurative marks
Trade Mark No 7007008:
Trade Mark No 1814383:
Trade Mark No 7007801:
Trade Mark No 7017049:
Trade Mark No 7007792:
Trade Mark No 7017015:
26      The applicant argues that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 in that it incorrectly assessed the similarity of the marks as well as the dominant and distinctive elements of the opposing marks.
27      According to the applicant, in particular, the signs at issue are similar ‘at least … to a certain degree’. The applicant maintains that the figurative elements in the mark applied for, particularly the combination and configuration of the colours green and white, has an independent distinctive character even assuming the word element to be dominant. The applicant relies in that regard on the results of the two opinion surveys covering, first, the neutralised packaging of Aspirin (‘the neutralised packaging survey’) and, second, the perception that German consumers have of the mark applied for (‘the Salospir survey’), which, in its submission, demonstrate that the consumers perceive the combination and configuration of the colours green and white as referring to the sign Aspirin. It further submits that the Board of Appeal incorrectly assessed those results.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009 (now Article 8(2)(a)(i) and (ii) of Regulation 2017/1001), ‘earlier trade marks’ is to mean EU trade marks and 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.
30      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
31      For the purpose of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services covered by the marks at issue are identical or similar. Those conditions are cumulative (see, to that effect, judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
32      In the present case, the Board of Appeal found, in paragraph 24 of the contested decision, that as regards the earlier EU figurative marks, the relevant public was the public in the entire European Union which consists of the general public and professionals in the field of medicine and pharmacy, who will display a high degree of attentiveness with regard to the pharmaceuticals at issue: that is not disputed by the parties.
33      That reasoning is also in accordance with the case-law, from which it is apparent, first, that where the goods at issue are pharmaceuticals, the relevant public is composed of medical professionals, on the one hand, and patients, as end users of those goods, on the other (see judgment of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraph 23 and the case-law cited; judgment of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 27) and, second, that medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 26 and the case-law cited). In particular, the relevant public is likely to display a higher than average degree of attentiveness, even with regard to pharmaceutical products that can be purchased without prescription (judgment of 10 December 2014, Novartis v OHIM — Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraph 21).
34      The Board of Appeal also found that the goods covered by the mark applied for were identical to those designated by the earlier EU figurative marks, which the parties do not dispute.
35      However, the applicant does dispute the Board of Appeal’s conclusion, that the signs at issue are not similar, arguing that the Board erroneously assessed their dominant and distinctive elements.
The dominant and distinctive elements of the signs at issue
36      The Board Of Appeal held, in paragraph 18 of the contested decision, that the word element ‘salospir’ constituted the dominant and distinctive element of the mark applied for, while as regards the figurative element, that the white tablet depicted in the bottom right corner was a mere illustration of the pharmaceuticals at issue and that the use of white and green colour and waved lines were common graphic elements which will be perceived as merely decorative.
37      In that regard, the case-law has established, in the first place, that, when assessing the dominant and distinctive character of one or more given components of a composite trade mark, account should be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (see, to that effect, judgment of 13 December 2007, Cabrera Sanchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 47). Where a trade mark is composed of both verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name than by describing the figurative element of the mark (see judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 54 and the case-law cited). According to settled case-law, the public will not, as a general rule, consider a descriptive element forming part of a composite mark to be the distinctive and dominant element in the overall impression conveyed by that mark (see judgment of 27 November 2007, Gateway v OHIM — Fujitsu Siemens Computers (ACTIVY Media Gateway), T‑434/05, not published, EU:T:2007:359, paragraph 47 and the case-law cited).
38      In the present case, taking account of its large size and its central position on a white background, the Board of Appeal was right to find that the word element ‘salospir’ dominated the overall impression conveyed by the mark applied for, all the more so since the figurative elements of that mark are either descriptive of the pharmaceuticals at issue, or fairly common within the sector, as will be explained below. Moreover, as the Board of Appeal pointed out in paragraph 21 of the contested decision, without being contradicted by the parties, the word element ‘salospir’ has no meaning. According to the case-law, a word element with no clear meaning in the languages of the Union has an inherent distinctive character (see, to that effect, judgment of 15 December 2016, Redpur v EUIPO — Redwell Manufaktur (Redpur), T‑227/15, not published, EU:T:2016:745, paragraph 31).
39      In addition, given that pharmaceuticals issued without prescription are purchased in a pharmacy and the purchaser, as a general rule, will say their name, the word element of the mark applied for must be held to be dominant for that reason too.
40      The case-law has held, in the second place, that the assessment of the similarity between two trade marks cannot be limited to taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. 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 of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 33).
41      In the present case, the Board of Appeal also correctly applied that case-law by assessing the similarity between the signs at issue not only on the basis of the element which it found to be dominant and distinctive, namely the word element of the mark applied for, but also by carrying out an overall analysis including both figurative elements of the mark applied for, namely the image of white tablets and the use of white and green colour and waved lines (see paragraph 36 above).
42      First, the Board of Appeal was correct in holding, in paragraphs 43 and 49 of the contested decision, that the green and white colour combination was commonplace in the pharmaceutical sector. Although the applicant argues that this statement is unsupported by any evidence, the Board of Appeal may take into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources, without evidence being required in that regard (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM— DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29). It is well known, as EUIPO has rightly noted in paragraph 30 of its response, that the colour green is found in the cross used as the international pharmacy symbol and that white is the most commonplace colour used on pharmaceuticals packaging. In addition, the Board of Appeal’s assertion is supported by numerous examples of pharmaceuticals packaging using those colours, presented by the intervener in the context of the proceedings before EUIPO.
43      Next, the Board of Appeal was also correct in holding, in paragraph 18 of the contested decision, that in the mark applied for, the image of the white tablet was a mere illustration of the pharmaceuticals at issue and the use of white and green colour and waved lines are common graphic elements which will be perceived as merely decorative. Therefore, and independently of the distinctive character of the earlier EU figurative marks, the white and green colour combination does not have an independent distinctive character in the mark applied for.
44      The applicant argues, however, that the combination and configuration of the colours white and green in the mark applied for has an ‘independent distinctive character’, citing, first, certain judgments of the General Court and of the Court of Justice, and, second, the results of the two surveys mentioned in paragraph 27 above.
The case-law cited by the applicant
45      Regarding the case-law on which the applicant relies, it should be noted that the characteristics of the signs at issue in the present case differ markedly from the signs at issue in the case-law cited by the applicant; that case-law is therefore irrelevant to the outcome of the present case. First, in contrast to the case which gave rise to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), in which one of the elements of the contested sign consisted of an earlier mark, in the present case the mark applied for does not incorporate an earlier mark as one of its components. Furthermore, unlike the abovementioned case, in which the contested sign did not contain a dominant element, the mark applied for in the present case is characterised by such a dominant element, which is not present in the earlier marks at issue.
46      Second, the analogy with the case that gave rise to the judgment of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española) (T‑363/04, EU:T:2007:264), is also unfounded in so far as the word element of the mark applied for had a very low inherent distinctive character, while the word element is dominant and distinctive in the present case. Moreover, in the judgment cited, the figurative element of the marks at issue was of greater importance because of the way in which the goods in question were purchased, which involved the consumer going himself to the shelves in supermarkets or establishments where those goods are located, while in the present case, the methods of purchase are, as a general rule, different (see paragraph 39 above).
47      Third, in the judgment of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062), it was held that there was a low degree of similarity between the opposing marks, in particular because they both used a font which is not commonly used in contemporary business life, while in the present case, the use of a common element, namely the white and green colour combination, is rather commonplace in the sector in question (see paragraph 42 above).
48      Fourth, the judgment of 10 April 2008, adidas and adidas Benelux (C‑102/07, EU:C:2008:217), was based on the premiss of a similarity between the signs at issue, without any word element, while the mark applied for in the present case is a composite sign, dominated, furthermore, by the word element.
49      Accordingly, the applicant’s arguments based on the abovementioned case-law should be rejected.
The surveys
50      The applicant has produced two surveys. As regards the neutralised packaging survey, the following picture was shown to 970 German consumers, who were told that the picture represented the packaging of an over-the-counter pharmaceutical product sold in pharmacies:
51      During the Salospir survey, a reproduction of the mark applied for was shown to 1 060 German consumers, who were told that the image which they had been shown represented an over-the-counter pharmaceutical product sold in pharmacies.
52      According to the applicant, the survey on neutralised packaging demonstrates that the combination and configuration of the colours white and green in the mark applied for possess an independent distinctive character and the Salospir survey proves that there was confusion between the mark applied for and the applicant’s earlier marks.
53      The Court considers, however, that the relevance of those surveys for the purpose of resolving the present dispute and their probative value are limited, with the result that they are not capable of invalidating the conclusions reached by the Board of Appeal.
54      Regarding their relevance for the purpose of resolving the present dispute, it must be held that the survey on neutralised packaging is not capable of demonstrating that the figurative elements of the mark applied for possess an independent distinctive character: there are several reasons for this.
55      First, it must be held that that survey did not concern the mark applied for and is thus not capable of demonstrating that the combination and configuration of the colours white and green possess an independent distinctive character in the mark applied for.
56      The figurative element in the mark applied for is dominated by a word element that is absent in the earlier mark No 7007008. Moreover, the figurative element of the mark applied for is different from the figurative element incorporated in the earlier mark No 7007008, which was reproduced in the packaging that was the subject of the neutralised packaging survey (see, in that regard, paragraph 75 below).
57      Second, and in so far as the applicant intends to demonstrate, through the neutralised packaging survey, the enhanced distinctive character of the earlier mark No 7007008, which was incorporated in the neutralised Aspirin packaging, it should be held that, as the Board of Appeal rightly noted in paragraph 30 of the contested decision, the potential distinctive character of that earlier mark does not affect the overall impression conveyed by the mark applied for.
58      According to settled case-law, where there is no similarity between the earlier mark and the mark applied for, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue. Since it is a necessary condition for the application of Article 8(1)(b) of Regulation No 207/2009 that the marks at issue be identical or similar, that provision is manifestly inapplicable where the Court has ruled out any similarity between the marks at issue. It is only if there is some similarity, albeit faint, between the marks at issue that the Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion between those marks on the part of the relevant public (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 64 to 66 and the case-law cited).
59      Regarding the Salospir survey, which is relied on by the applicant in order to establish that there is confusion between the signs at issue on the part of the relevant public, it should be borne in mind that the legal principles applicable to the assessment of likelihood of confusion between the signs at issue constitute a point of law (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 52 and the case-law cited), as the Board of Appeal rightly observed in paragraph 51 of the contested decision, and as was also acknowledged by the applicant and the intervener. According to the case-law cited in paragraph 31 above, the existence of a likelihood of confusion presupposes in particular that the signs at issue are identical or similar. In the present case, since the signs at issue are dissimilar, as will be explained below, that condition is not satisfied. That principle, established both in Article 8(1)(b) of Regulation No 207/2009 and in the case-law, cannot be contradicted by a survey commissioned by one of the parties to the dispute, seeking to prove that there is a likelihood of confusion.
60      As for the probative value of the two surveys, according to settled case-law, the principle which prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility (see, to that effect, judgment of 15 December 2016, Infineon Technologies v Commission, T‑758/14, not published, EU:T:2016:737, paragraph 179 and the case-law cited). Thus, in order to assess the probative value of a document, it is necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM — Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 53 and the case-law cited).
61      The probative value of a survey will depend on the survey method used (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM— Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 38). Applied to a survey produced as evidence by one party, the case-law cited in paragraph 60 above has already led the Court to refrain from recognising that the results of the survey have probative value, as the survey in question did not include sufficient information to enable the Court to satisfy itself as to the reliability of the survey (see, to that effect, judgment of 30 May 2013, Brauerei Beck v OHMI — Aldi (Be Light), T‑172/12, not published, EU:T:2013:286, paragraph 28).
62      The objections raised by EUIPO and by the intervener call the probative value of the two surveys produced by the applicant into question.
63      First, it is apparent from the case-law that one of the criteria allowing the results of a survey to be recognised as having probative value is that the survey be carried out in the objective circumstances in which the marks at issue are present, or may be present, on the market.
64      In that regard, in its judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), (T‑147/03, EU:T:2006:10), the Court did not accord as much importance as the applicant claimed should be accorded to the results of a survey produced in the context of a dispute, because ‘that survey, carried out at the home of each person questioned, did not take account of the objective circumstances in which the respective marks are present, or may be present, on the market’ (judgment of 12 January 2006, QUANTUM, T‑147/03, EU:T:2006:10, paragraph 90). However, a survey was held to be unobjectionable where the method chosen when it was conducted reflected what actually occurs in a large number of purchases of the goods concerned (see, to that effect, judgment of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, not published, EU:T:2012:535, paragraph 73).
65      The neutralised packaging survey and the Salospir survey were not carried out in the objective circumstances in which the marks at issue are present, or may be present, on the market. First, pharmaceuticals sold over-the-counter are purchased in pharmacies, the purchaser, as a general rule, saying their name (see paragraph 39 above) and not looking solely at their packaging or at an image of the mark in question. Furthermore, the neutralised packaging shown to the participants in the first survey is never present on the market as such. Next, as is apparent from Annex A5, pages 36 and 88, and as the applicant confirmed at the hearing, the two surveys were conducted at the homes of the participants and therefore were not carried out in conditions that reflected what actually occurs in purchases of the goods concerned, since pharmaceuticals are normally purchased in pharmacies and not at home. Lastly, as EUIPO and the intervener have rightly argued, the Salospir survey was carried out in Germany, where the product SALOSPIR is not traded, with the result that the persons interviewed were unlikely to have ever been confronted with the product in question.
66      Second, it is apparent from the case-law that the probative value of surveys also depends upon whether the persons interviewed have been shown several images in order to be able to spontaneously associate one of those images with a trade mark or an undertaking, instead of being shown one image only. Thus, in a case in which a drawing or a photo of only Bic lighters was shown to the persons interviewed and they were asked which mark they most associated with the image of that lighter, the Court held that that survey could not be considered to demonstrate that a significant part of consumers identified, by means of the mark applied for, the product in question as originating from the BIC company rather than from another company. It would have been another matter if different lighter shapes had been shown during the survey instead of the single shape of the trade mark applied for. It would have been possible in that case to take into account the number of people who spontaneously and without being influenced attributed the picture of the shape in question to BIC (judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 84).
67      During the two surveys in question, the participants were not shown several images, but only one single image.
68      Third, the probative value of the surveys also depends on the way in which the questions were formulated. Thus, for example, the first question asked during the Salospir survey, by which the participants were asked which over-the-counter medicines they thought of when seeing the picture of the product SALOSPIR, suggested that the picture referred to an existing product, and since the mark applied for had not yet been used on the German market, it could have induced the participants, who were German consumers, to think of the over-the-counter pharmaceuticals that they already knew, as the Board of Appeal rightly asserts in paragraph 51 of the contested decision.
69      In addition, the second question asked during the Salospir survey, by which the participants were asked if they associated the packaging of the product SALOSPIR with another pharmaceutical product, with another mark or with another company, was also suggestive. Indeed, the question asked already suggested that the mark applied for was reminiscent of something else.
70      Accordingly, taking account of the findings set out in paragraphs 53 to 69 above, it must be concluded that the results of the surveys produced by the applicant are not capable of invalidating the Board of Appeal’s conclusions.
71      It follows that the Board of Appeal correctly analysed the dominant and distinctive elements of the signs at issue. Therefore, the applicant’s argument that the Board of Appeal erred in its assessment of those elements must be rejected as unfounded.
The comparison of the signs at issue
72      In the first place, regarding the comparison between the mark applied for and the earlier EU figurative marks No 7007008 and No 1814383, the Board of Appeal noted, in paragraph 26 of the contested decision, that the latter marks were figurative marks showing, respectively, a rectangle with the top part in white and the bottom part in green and two small grey and white horizontal stripes in the green part and a rectangle with the top part in white and the bottom part in green and a small green and white horizontal line in the middle. The Board of Appeal held, in paragraphs 27 and 28 of the contested decision, that the signs at issue were visually dissimilar and, in paragraph 29 of the contested decision, that no aural or conceptual comparison was possible, given that the earlier marks mentioned above do not contain any word element that could be spoken. It concluded, in paragraph 30 of the contested decision, that the signs at issue were dissimilar.
73      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 30). 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 that 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).
74      In the present case, as regards, first, the visual comparison, the word element ‘salospir’, which is dominant and distinctive in the mark applied for (see paragraphs 36 to 39 above), has no counterpart in the earlier marks at issue, since those marks do not have any word element.
75      Next, the marks at issue certainly share the same white and green colours as well as the horizontal layout of those colours. However, these shared features are not significant enough to offset the visual differences between those marks. The figurative elements of the marks at issue are different, as the Board of Appeal observed in paragraph 28 of the contested decision: the curve on the right side which divides the upper part from the lower part in the mark applied for is far more emphatic than that on the left side of mark No 7007008, while mark No 1814383 does not display any curve; the mirror effect in the mark applied for, created by the white lines which are reflected, one ascending and the other descending, is absent in the two earlier marks; the two small grey lines between the white part and the green part are absent in the mark applied for; the image of a tablet is present in the mark applied for, but not in the earlier marks; finally, as the intervener rightly argues, the tones of green are not exactly the same in the signs at issue.
76      Furthermore, the overall impression produced by the mark applied for is dominated by the word element of that mark, which is completely absent in the earlier EU figurative marks. Therefore, the Board of Appeal correctly concluded in paragraph 28 of the contested decision that the differences between the signs at issue outweighed the single element that they had in common, namely the use of the combination of the colours white and green.
77      In addition, contrary to what the applicant asserts in paragraph 58 of the application, the Board of Appeal took account not only of the combination of the colours, but also of their horizontal configuration. In paragraph 28 of the contested decision, the Board noted that mark No 7007008 consisted of a top part in white and a bottom part in dark green, and that the mark applied for consisted of an upper part in white and a lower part in different shades of green.
78      Second, regarding the phonetic and conceptual comparison, the Board of Appeal rightly held, in paragraph 29 of the contested decision, that, taking account of the fact that the earlier EU figurative marks did not contain any word element that could be pronounced or understood, no such comparison was possible, which, moreover, is not disputed by the parties.
79      For all these reasons, the overall impression produced by the figurative marks No 7007008 and No 1814383 is different from that produced by the mark applied for.
80      In the second place, as regards the comparison between the mark applied for and the earlier EU figurative marks No 7007801, No 7017049, No 7007792 and No 7017015, the Board of Appeal rightly held, in paragraph 32 of the contested decision, that as consumers do not perceive the white and green colouring of the mark applied for as distinctive elements, the coincidence between those colours is on its own insufficient to establish any relevant visual similarity, while the differences between the mark applied for and the earlier marks are even more pronounced as a result of the additional horizontal stripe in yellow, red, blue and orange, respectively, which has no equivalent in the mark applied for.
81      With regard to the foregoing, it must be held that the Board of Appeal did not err in concluding that the signs at issue were dissimilar.
82      It follows that the second part of the first plea in law must be rejected.
The first part of the first plea in law
83      The marks at issue are the following:
Mark applied for
Earlier German trade marks
Aspirin
84      First, the applicant claims that the Board of Appeal was incorrect in its assessment of the similarity of the mark applied for with the earlier German trade marks. The five letters in common between the word element of the mark applied for and the earlier German marks create similarity at least ‘to a certain degree’ and, consequently, the Board of Appeal ought to have carried out a global assessment of the likelihood of confusion, instead of finding that there was complete dissimilarity.
85      Second, the applicant takes issue with the Board of Appeal for not having assessed the overwhelming reputation of the earlier German marks.
86      EUIPO and the intervener dispute those arguments in their entirety.
87      As a preliminary point, for the reasons explained in paragraphs 32 and 33 above, the Board of Appeal rightly held, in paragraph 15 of the contested decision that the relevant public was the German public, composed of professionals and of end consumers with a high degree of attentiveness, as regards goods that are likely to affect their state of health. Those findings have not, moreover, been disputed by the parties.
88      It must also be held, as the Board of Appeal did in paragraph 15 of the contested decision, that the goods covered by the mark applied for are identical to those designated by the earlier German marks, which moreover, is not disputed by the parties.
89      As regards the visual, phonetic and conceptual comparison of the signs at issue, the Board of Appeal found, first, in paragraph 19 of the contested decision, that the signs at issue were visually different, as the word ‘salospir’ differed from the word ‘aspirin’ in the beginning, the middle and the end, and that the mark applied for also contained figurative elements that were absent from the earlier marks.
90      In paragraph 20 of the contested decision, the Board of Appeal found that the signs at issue were also phonetically different, since, apart from the fact that the word ‘salospir’ and the word ‘aspirin’ have the same number of syllables, each of those syllables was different, as were the sequences of vowels and the overall phonetic impressions.
91      Lastly, the Board of Appeal found, in paragraph 21 of the contested decision, that conceptually no comparison was possible, since the words ‘salospir’ and ‘aspirin’ have no meaning in German.
92      The assessment made by the Board of Appeal is not vitiated by any error in law.
93      Concerning, first, the visual comparison, the applicant’s argument that the five letters in common between the signs at issue create similarity at least ‘to a certain degree’ is unconvincing. In accordance with the case-law cited in paragraph 73 above, it is the overall impression produced by the signs at issue that must be taken into consideration for the purpose of assessing the visual, phonetic or conceptual similarity of those signs and, therefore, the likelihood of confusion. In that regard, even if the signs share, as the applicant argues, five letters (the letter ‘a’ and the group of letters ‘spir’), it must be held that they are visually different, as the Board of Appeal rightly noted in paragraph 19 of the contested decision, by their initial (‘sa’ and ‘as’), middle (‘los’ and ‘pi’) and final (‘pir’ and ‘rin’) parts. In addition, visually, the earlier German marks and the mark applied for do not share figurative elements, which are found only in the latter mark. To find a certain degree of similarity, as claimed by the applicant, an analysis would have to be made that consists of dissecting the different word elements in question (the earlier marks and the word element of the mark applied for). Apart from the fact that that would lead to the figurative elements of the latter mark being neglected, it is contrary to the case-law cited in paragraph 73 above, according to which the overall impression produced by the signs at issue must be taken into consideration for the purpose of assessing the visual, phonetic and conceptual similarity of those marks.
94      In so far as the applicant argues, in paragraph 67 of the application, that ‘the Board [of Appeal] should have analysed whether the presence of the similarities in the words did not at least contribute to the … confusion [proven by the Salospir survey]’, it suffices, concerning the relevance of that survey and its probative value, to refer to paragraphs 53 to 70 above.
95      Next, as regards the phonetic aspect, the Board of Appeal rightly held in paragraph 20 of the contested decision, that the signs at issue were different, noting that, apart from the fact that the word ‘salospir’ and the word ‘aspirin’ have the same number of syllables, they do not share any syllable or a sequence of vowels (‘a’, ‘o’ and ‘i’ as opposed to ‘a’, ‘i’ and ‘i’), and the overall impression is dissimilar. Therefore, the coincidence of the group of letters ‘spir’ in the signs at issue does not support the conclusion that those signs are similar, as those letters are in different syllables and furthermore, occupy a different location within each of the words making up those signs.
96      Moreover, in view of the high degree of attentiveness shown by the relevant public in the present case (see paragraph 87 above), that public will, as a general rule, pay particular attention to the differences between the names of pharmaceutical products since such products are, as a general rule, purchased by end consumers who say the products’ names when ordering them in pharmacies.
97      Lastly, the Board of Appeal found, in paragraph 21 of the contested decision, that conceptually no comparison was possible, since ‘salospir’ and ‘aspirin’ have no meaning in German. The parties do not dispute that finding.
98      It follows that the Board of Appeal was right to hold, in paragraph 22 of the contested decision, that the signs at issue were dissimilar and that, consequently, there was no need to examine whether or not there was a likelihood of confusion on the part of the relevant public.
99      Since, in accordance with the case-law cited in paragraph 58 above, one of the conditions necessary for there to be a likelihood of confusion, namely the similarity between the marks at issue, was not satisfied, the Board of Appeal rightly concluded, in paragraph 22 of the contested decision, that there was no need to carry out a global assessment of the likelihood of confusion or to take account of the recognition or reputation enjoyed by the earlier mark in question.
100    Therefore, the applicant’s argument, by which it complains that the Board of Appeal did not take account of the reputation enjoyed by the earlier German marks, must be rejected.
101    For all the foregoing reasons, the first part of the first plea in law must be rejected and, therefore, so must the first plea in law in its entirety.
The second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
102    The applicant claims that the Board of Appeal infringed Article 8(5) of Regulation No 207/2009 in that it erred in its assessment of the similarities between the marks and of the dominant and distinctive elements of the various marks relied on in support of the opposition and therefore denied any similarity between the signs at issue, even though the Salospir survey shows that consumers actually associate the mark applied for with the sign Aspirin. The applicant submits that the Board of Appeal’s complete denial of any similarity amounts to a circumvention of the case-law relating to Article 8(5), which has established, in particular, that a faint similarity suffices for the application of that provision.
103    EUIPO and the intervener dispute the applicant’s arguments.
104    Article 8(5) of Regulation No 207/2009 provides that upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) of that regulation, the trade mark applied for is not to be registered if it is identical with, or similar to, the earlier trade mark, where the latter is an earlier EU trade mark which has a reputation in the European Union, or an earlier national trade mark which 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.
105    For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, the following conditions must be met: first, the signs at issue must be identical or similar, second, the earlier mark cited in opposition must have a reputation and third, there must be a risk that 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. Those three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 16 March 2016, The Body Shop International v OHIM — Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 17 and the case-law cited).
106    Since, as follows from the analysis of the first plea in law (see paragraphs 72 to 81 and 89 to 98 above), the Board of Appeal was right to conclude that there was no similarity between the signs at issue, the Board was also right to conclude, in paragraphs 23 and 31 of the contested decision, that the first condition for the application of Article 8(5) of Regulation No 207/2009, relating to the existence of an identity or a similarity between the signs at issue, was not satisfied in the present case.
107    Consequently, the second plea in law must be rejected as unfounded.
The third plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009
108    The signs at issue are as follows:
Mark applied for
Non-registered sign
109    In the context of its third plea, the applicant argues that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 in finding that the applicant had failed to establish that the conditions for the protection of a non-registered sign under the Markengesetz (the German Law on trade marks) were met.
110    First, according to the applicant, the Board of Appeal erred when, after recognising that the sign invoked was used in Germany in the course of trade, it denied that the sign was recognised ‘as a trade mark’ by the relevant public. The applicant argues, relying on three judgments of the Court of Justice, that the recognition ‘as a trade mark’ of a non-registered composite sign such as the one at issue is, on the contrary, proved by the high degree of recognition of the two prominent elements of the sign, namely the word ‘aspirin’, the reputation of which is not in dispute, and the colour combination and configuration, recognition of which is clear from the results of the neutralised packaging survey.
111    Second, the applicant argues that the Board of Appeal erred in denying any similarity between the signs at issue and in refusing to examine the degree of similarity between them, even though the Salospir survey clearly showed that consumers associate the two signs. The applicant further contends that the Board of Appeal’s assessment as to the Salospir survey was flawed.
112    EUIPO and the intervener dispute the applicant’s arguments.
113    Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a registered mark may oppose registration of an EU trade mark if that sign satisfies all of four conditions: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (see, to that effect, judgment of 21 January 2016, BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY), T‑62/14, not published, EU:T:2016:23, paragraph 19 and the case-law cited). Those conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (judgment of 30 June 2009, Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, EU:T:2009:226, paragraph 35).
114    The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment of 29 June 2016, Group v EUIPO — Iliev (GROUP Company TOURISM & TRAVEL), T‑567/14, EU:T:2016:371, paragraph 27).
115    In the present case, the Board of Appeal held, in paragraph 37 of the contested decision, that the first two conditions set out above were met, which is not disputed by the parties.
116    As for the other two conditions set out in Article 8(4)(a) and (b) of Regulation No 207/2009, it is apparent from the phrase ‘where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign’ that the party seeking protection for a non-registered sign must rely either on EU legislation or on the law of a Member State which it claims is applicable to the sign. In the latter case, those two conditions, unlike the abovementioned conditions, are assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law of the Member State which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify prohibiting the use of a subsequent trade mark (see, to that effect, judgment of 14 December 2017, Consejo Regulador ‘Torta del Casar’ v EUIPO — Consejo Regulador ‘Queso de La Serena’ (QUESO Y TORTA DE LA SERENA), T‑828/16, not published, EU:T:2017:918, paragraph 19 and the case-law cited).
117    In accordance with Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), the burden of proving that the last-mentioned condition is satisfied lies with the opponent before EUIPO (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 189). The same is true concerning the burden of proving that the third condition, relating to the acquisition of the earlier right in accordance with national law, is met, pursuant to Rule 19(2)(d) of Regulation No 2868/95, (now Article 7(2)(d) of Delegated Regulation (EU) 2017/1430). That rule places on the opponent the burden of providing EUIPO with particulars showing that he satisfies the necessary conditions, in accordance with the national law which he is seeking to have applied, in order to be able to oppose, by virtue of an earlier right, the registration of the EU mark applied for. More specifically, according to the case-law, it is for the party invoking national law to establish that the earlier sign relied on comes within the scope of the law of the Member State relied on and to provide particulars establishing the content of that law (judgment of 28 October 2015, Rot Front v OHIM — Rakhat (Маска), T‑96/13, EU:T:2015:813, paragraph 30).
118    In the present case, the applicant relies on the Aspirin packaging, on the basis of Paragraph 4(2) of the German Law on trade marks, which grants trade-mark protection to a sign used in the course of trade where such use has led to recognition of the sign in question by the relevant public ‘as a trade mark’.
119    As regards the third condition provided for in Article 8(4) of Regulation No 207/2009, relating to the fact that the right to the earlier non-registered sign must have been acquired in accordance with the law of the Member State invoked by the applicant, the Board of Appeal held that the conditions for the protection of a mark under Paragraph 4(2) of the German Law on trade marks were not met.
120    In that regard, in paragraph 38 of the contested decision, the Board of Appeal found that none of the documents submitted by the applicant made reference to the non-registered sign relied on. The Board of Appeal next noted, in paragraph 39 of the contested decision, relying on the wording of Paragraph 4(2) of the German Law on trade marks and on the Ingerl/Rohnke commentary, Markengesetz, 2010, that the recognition ‘as a trade mark’ had to concern the actual sign invoked and not its individual elements which, as such, were never used in trade. The applicant limited itself, however, to demonstrating the reputation of the word mark Aspirin and of the neutralised packaging, but not that of the Aspirin packaging reproduced in the non-registered sign. Moreover, the Board of Appeal found, in paragraph 40 of the contested decision, that the non-registered sign was more than a mere combination of those two elements, inasmuch as it contained, in addition to the word ‘aspirin’ written in black, two figurative elements which are not to be found on the neutralised packaging, namely a green circle containing the word ‘Bayer’ in the top left corner and a picture of two slightly superimposed white tablets in the bottom right corner.
121    In order to refute those findings, the applicant argues, in essence, that the recognition ‘as a trade mark’, for the purposes of Paragraph 4(2) of the German Law on trade marks, of the non-registered sign at issue can be proven by the recognition ‘as a trade mark’ of the constituent elements of that sign. The applicant relies in that regard on certain judgments of the Court of Justice and on the results of the surveys.
122    However, it must be held that the applicant does not put forward any argument capable of demonstrating that the Board of Appeal erred in interpreting and applying Paragraph 4(2) of the German Law on trade marks.
123    First, the applicant does not demonstrate that the applicable national law must be interpreted as meaning that the packaging of a product, which is not registered as a mark, can nevertheless be granted the protection of a mark if it is demonstrated that the relevant public recognises certain elements which compose the packaging ‘as a trade mark’. In fact, the applicant bases its view on three judgments of the Court of Justice, namely the judgments of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432, paragraphs 29 to 32), of 18 April 2013, Colloseum Holding (C‑12/12, EU:C:2013:253, paragraphs 27, 28 and 36), and of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497, paragraphs 23 and 35 to 41). Those judgments concern the interpretation of provisions of EU law and not the interpretation of German law.
124    It follows, however, from the case-law cited in paragraph 116 above that evidence of the fact that the third condition provided for by Article 8(4) of Regulation No 207/2009 is satisfied must be produced with regard to German national law, since it is this law upon which the applicant relies, and not EU law. Accordingly, the applicant cannot rely on those judgments of the Court of Justice to prove that the third requirement is satisfied.
125    Second, although the applicant asserts that the use of the packaging in question in the course of trade has been proven, it does not establish that, under the applicable national law, the mere use of packaging in business amounts to the recognition of that packaging ‘as a trade mark’ for the purposes of Paragraph 4(2) of the German Law on trade marks.
126    Third, nor has the applicant established that the applicable national law allowed it to prove the recognition ‘as a trade mark’ of the packaging of a product on the basis of the recognition ‘as a trade mark’ of certain constituent elements thereof — such as in particular the neutralised packaging of the product –– which, however, have never been used in the course of trade as such.
127    Lastly, as the Board of Appeal correctly held in paragraph 40 of the contested decision, the non-registered sign relied on by the applicant is more than a mere combination of the word ‘aspirin’ and a combination and configuration of colours (see paragraph 120 above). In fact, the non-registered sign, in addition to the word ‘aspirin’, written in black, and the neutralised packaging, contains two figurative elements which are not to be found on the neutralised packaging, namely a green circle containing the word ‘Bayer’ in the top left corner and a picture of two slightly superimposed white tablets in the bottom right corner. The applicant has not demonstrated that those differences had no effect on the interpretation and application of the relevant national law.
128    In those circumstances, the applicant, who bears the burden of proof, has not proved to the requisite legal standard, according to the national law upon which it relies, that the potential recognition ‘as a trade mark’ of certain elements which make up the packaging of a product entailed the recognition ‘as a trade mark’ of that packaging.
129    Regarding the applicant’s arguments concerning the results of the surveys, reference should be made, as regards the relevance and the probative value of those surveys, to paragraphs 53 to 70 of the present judgment.
130    Therefore, since the third condition provided for by Article 8(4) of Regulation No 207/2009 is not satisfied, the third plea in law must be rejected, without it being necessary to examine whether the fourth condition laid down by that provision is satisfied.
131    It follows from all the foregoing that the action must be dismissed in its entirety.
The conclusions on referring the case back to EUIPO
132    By its second head of claim, the intervener expressly requests that, in the event of the contested decision being annulled, the case be referred back to EUIPO.
133    Since the action has been dismissed, there is no need to adjudicate on this head of claim, which is submitted in the alternative by the intervener.
Costs
134    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
135    In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the form of order sought by those parties.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Bayer AG to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Uni-Pharma Kleon Tsetis, Farmakeutika Ergastiria AVEE in the proceedings before the General Court.
Tomljenović
Marcoulli
Kornezov
Delivered in open court in Luxembourg on 24 October 2018.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.