Judgment of the General Court (Fifth Chamber) of 5 October 2020 –

SBS Bilimsel Bio Çözümler v EUIPO – Laboratorios Ern (apiheal)

(Case T-53/19)

(EU trade mark – Opposition proceedings – Application for EU figurative mark apiheal – Earlier national word mark APIRETAL – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Alteration of a decision of the Office – Assessment in the light of the powers conferred on the Board of Appeal (Council Regulation No 207/2009, Arts 45 and 64(1)) (see paras 24, 25)

2. EU trade mark – Definition and acquisition of the EU 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 31, 32, 111)

3. EU trade mark – Definition and acquisition of the EU 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 – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 34)

4. EU trade mark – Definition and acquisition of the EU 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 – Figurative mark apiheal and word mark APIRETAL (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 38, 55, 64, 70-73, 90, 98, 105, 109, 110, 115, 116, 120, 121)

5. EU trade mark – Definition and acquisition of the EU 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 42, 48, 53)

6. EU trade mark – Definition and acquisition of the EU 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 – Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 74-76, 84)

7. EU trade mark – Definition and acquisition of the EU 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 – Visual similarity between a figurative mark and a word mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 83, 85, 86)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 19 November 2018 (Case R 1725/2017-4), relating to opposition proceedings between Laboratorios Ern and SBS Bilimsel Bio Çözümler Sanayi Ve Ticaret.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 1725/2017-4) as regards the ‘pharmaceutical and veterinary preparations for medical purposes; chemical preparations for medical and veterinary purposes, chemical reagents for pharmaceutical and veterinary purposes; dietary supplements for pharmaceutical and veterinary purposes; dietary supplements; nutritional supplements; medical preparations for slimming purposes; food for babies; herbs and herbal beverages adapted for medicinal purposes; herbal supplements; herbal creams for medical purposes; herbal creams for medical use; herbal teas for medicinal purposes; liquid herbal supplements; teeth filling material, dental impression material, dental adhesives and material for repairing teeth; sanitary preparations for medical use; hygienic pads; hygienic tampons; plasters; materials for dressings; diapers, including those made of paper and textiles; fungicides; disinfectants; antiseptics; detergents for medical purposes’ in Class 5 and the ‘bee glue for human consumption, propolis, propolis for human consumption’ in Class 30;

2. Dismisses the action as to the remainder;

3. Orders EUIPO to bear its own costs and to pay those incurred by SBS Bilimsel Bio Çözümler Sanayi Ve Ticaret AŞ;