Judgment of the General Court (Second Chamber) of 3 June 2015 —

Pensa Pharma v OHIM — Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa)

(Joined Cases T‑544/12 and T‑546/12)

‛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’

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Re-examination of the facts in the light of evidence not previously submitted before OHIM bodies — Exclusion (Council Regulation No 207/2009, Art. 65) (see para. 25)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of OHIM — Exclusion (Council Regulation No 207/2009, Art. 65) (see para. 31)

3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 59-62, 139-141)

4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 63-67, 80)

5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Similarity of the marks concerned — Whether conceptual differences may neutralise visual or aural similarities — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 114)

6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 128, 130)

7. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Word mark PENSA PHARMA and figurative mark pensa — Word marks PENTASA (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 142, 146-149)

Re:

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.

Operative part

The Court:

1. Dismisses the actions;