JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
15 March 2012 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark ZYDUS – Earlier Community word mark ZIMBUS – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑288/08,
Cadila Healthcare Ltd, established in Ahmedabad (India), represented by S. Bailey, F. Potin, and A. Juaristi, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Novartis AG, established in Basle (Switzerland), represented by N. Hebeis, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 7 May 2008 (Case R 1092/2007‑2), relating to opposition proceedings between Novartis AG and Cadila Healthcare Ltd,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas and K. O’Higgins (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 25 July 2008,
having regard to the response of OHIM lodged at the Court Registry on 28 October 2008,
having regard to the response of the intervener lodged at the Court Registry on 6 November 2008,
having regard to the application by the applicant for a ruling that there is no need to adjudicate, lodged at the Court Registry on 13 September 2011,
further to the hearing on 15 September 2011, which the intervener did not attend,
having regard to the observations of the intervener on the application by the applicant for a ruling that there is no need to adjudicate, lodged at the Court Registry on 5 October 2011,
further to the close of the oral procedure on 12 October 2011,
gives the following
Judgment
Background to the dispute
1 On 18 July 2003, the applicant, Cadila Healthcare Ltd, filed an application for registration of 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 Registration as a mark was sought for the word sign ZYDUS.
3 The goods in respect of which registration was applied for are in, inter alia, Class 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, in particular, to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, … disinfectants; … fungicides …’.
4 The trade mark application was published in Community Trade Marks Bulletin No 19/2004 of 10 May 2004.
5 On 3 August 2004, the intervener, Novartis AG, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark ZIMBUS, filed on 29 August 2001 and registered on 6 February 2003 under number 2 356 954, for ‘pharmaceutical preparations’ in Class 5.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By decision of 31 May 2007, the Opposition Division upheld the opposition in respect of ‘pharmaceutical, veterinary and sanitary preparations’ and ‘fungicides’, but rejected it in respect of ‘dietetic substances adapted for medical use’ and ‘disinfectants’.
9 On 13 July 2007, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division in so far as it upheld the opposition in part.
10 By decision of 7 May 2008 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part, in respect of ‘fungicides’, and accordingly annulled the decision of the Opposition Division in so far as it refused the Community trade mark application with respect to those goods.
11 By contrast, the Board of Appeal confirmed the decision of the Opposition Division in so far as it upheld the opposition in respect of ‘pharmaceutical, veterinary and sanitary preparations’. The Board of Appeal found that those goods were identical or highly similar to the pharmaceutical preparations covered by the earlier trade mark. In addition, it found that the trade marks at issue were visually dissimilar but phonetically similar, and that they were meaningless and therefore could not be compared conceptually. Lastly, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue with respect to the abovementioned goods.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision, in so far as it did not allow the trade mark applied for to proceed to registration for ‘pharmaceutical, veterinary and sanitary preparations’;
– order OHIM to pay the costs relating to both the present proceedings and the proceedings before the Board of Appeal.
13 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 In its letter of 13 September 2011, the applicant claims that the Court should rule that there is no longer any need to adjudicate.
15 OHIM, at the hearing, and the intervener, in its observations of 5 October 2011, contend that the Court should dismiss the application for a ruling that there is no need to adjudicate.
The application for a ruling that there is no need to adjudicate
16 By letter lodged at the Court Registry on 13 September 2011, the applicant informed the Court that the earlier mark has not been in force since 29 August 2011 as the intervener had not renewed its registration prior to that date. Consequently, there could no longer be any likelihood of confusion between that mark and the mark applied for and the present case had become devoid of purpose.
17 At the hearing, OHIM rejected the applicant’s claims. First, it relied on the fact that, under Article 47(3) of Regulation No 207/2009, the intervener had a ‘period of grace’ of six additional months to submit a request for renewal of its registration, with the result that, at that stage of the proceedings, it was ‘premature’ to propose that the Court rule that there is no need to adjudicate. Secondly, it submitted that, even if the intervener did not submit such a request within that period, that would not affect the present action since the earlier mark was valid at the time when the contested decision was adopted.
18 In its observations of 5 October 2011, the intervener also contested the applicant’s application for a ruling that there is no need to adjudicate by putting forward, in essence, the same arguments as OHIM.
19 Article 46 of Regulation No 207/2009, which reproduces Article 46 of Regulation No 40/94, provides that Community trade marks are registered for a period of 10 years from the date of filing of the application and that registration may be renewed in accordance with Article 47 of Regulation No 207/2009, which reproduces Article 47 of Regulation No 40/94.
20 Article 47(3) of Regulation No 207/2009 provides:
‘The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period.’
21 It is common ground between the parties that the intervener did not submit a request for renewal of the registration of the earlier mark within the six-month period provided for by the first sentence of Article 47(3) of Regulation No 207/2009, that is to say, before 31 August 2011. However, as the intervener still has the possibility of submitting such a request, and of paying the requisite fees, within the further period of six months referred to in the third sentence of that provision, which expires in the present case on 1 March 2012, it is only if, by that latter date, it has not made use of that possibility that the registration may once and for all be regarded as having expired on 29 August 2011. It is not apparent from the case-file whether the intervener has acted to that effect or not.
22 In any event, even if it were to appear that the registration of the earlier mark expired on 29 August 2011, it could not be held that the present action has become devoid of purpose. It is only as of that date that that mark no longer has the effects provided for by Regulation No 40/94 or by Regulation No 207/2009 and not in respect of the earlier period with regard to which the contested decision was adopted (see, by analogy, judgment of 4 November 2008 in Case T‑161/07 Group Lottuss v OHIM – Ugly (COYOTE UGLY), not published in the ECR, paragraphs 49 and 50). Consequently, no account can be taken of a possible non-renewal of the earlier mark for the purpose of assessing the validity of the contested decision. The action brought in the present case does indeed relate to an earlier mark which produced effects at the time when that decision was adopted.
23 The application for a ruling that there is no need to adjudicate must therefore be dismissed.
Substance
24 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. In support of that plea, in the first place, it maintains that the Board of Appeal erred in finding that the ‘veterinary preparations’ and ‘sanitary preparations’ covered by the mark applied for are, respectively, identical and highly similar to the ‘pharmaceutical preparations’ covered by the earlier trade mark. In the second place, the applicant contests the Board of Appeal’s assessment that the marks at issue are phonetically similar. Thirdly, it claims that the Board of Appeal erred in law in concluding that there was a likelihood of confusion between those marks.
25 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
26 According to settled case-law, the risk that the public might 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, 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 Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
27 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the marks in issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
28 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 40/94 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
29 The question whether the Board of Appeal was right to find that there was a likelihood of confusion between the earlier mark and the trade mark applied for must be examined in the light of those considerations.
The relevant public
30 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
31 In the first place, having regard to the fact that the earlier mark is a Community trade mark, the relevant territory in respect of which to assess the likelihood of confusion must be considered to be that of the European Union, as the Board of Appeal correctly stated in paragraph 19 of the contested decision, and which is, moreover, not disputed by the parties.
32 In the second place, as regards the relevant public, the Board of Appeal stated, in paragraph 20 of the contested decision, that this consisted of ‘members of the general public across the [European Union] who purchase “pharmaceutical preparations” and related goods’. However, as OHIM rightly states, it is apparent from other passages of that decision, and in particular from the reference, in paragraph 31, to the judgment of the Court of Justice in Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, that the Board of Appeal took the view that healthcare professionals should also be included in the relevant public. That assessment must be upheld. First, it follows from the case-law that pharmaceutical preparations are aimed both at healthcare professionals, such as doctors, pharmacists and nurses, and at end consumers (see judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 27 and the case-law cited). Secondly, veterinary preparations are intended for healthcare professionals, such as veterinary surgeons and pharmacists, average consumers, such as pet owners, or more specialised consumers, such as breeders or farmers. The applicant’s claim that the relevant public for those goods is made up solely of professionals must, therefore, be rejected. In that regard, it must be pointed out in particular that, as the applicant itself states in the application, veterinary preparations are not exclusively dispensed by veterinary surgeons or, on prescription from a veterinary surgeon, by pharmacists, but are also sold over the counter both in shops specialising in the sale of pets and articles for pets and in supermarkets. Thirdly, sanitary preparations are aimed both at healthcare professionals, such as doctors and nurses, in particular in so far as they are complementary in relation to pharmaceutical preparations (see paragraph 44 below), and at average consumers, in so far as they may also be bought in cosmetic stores or supermarkets.
33 In the third place, as regards the degree of attention of the relevant public, the Board of Appeal stated, in paragraph 30 of the contested decision, that the pharmaceutical preparations in Class 5 also included non-prescription goods, a large number of which were mass-produced, low-cost and supplied through very broad distribution channels. It took the view that there was a relatively low level of attention on the part of consumers in respect of the latter goods. In paragraph 31 of the contested decision, the Board of Appeal added that the fact that consumers display a higher level of attention and that their choice is liable to be influenced, or even determined, by healthcare professionals did not in itself exclude all likelihood of confusion on the part of those consumers with regard to the origin of the goods at issue.
34 The applicant submits that the level of attention on the part of the relevant public is, in the case of pharmaceutical preparations, high and, in the case of veterinary preparations, higher than average.
35 OHIM, for its part, maintains that that level of attention varies from average, in the case of sanitary preparations, to high, in the case of pharmaceutical preparations and veterinary preparations.
36 It is apparent from the case-law that, so far as pharmaceutical preparations are concerned, the relevant public’s level of attention is relatively high (judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraphs 25 and 65, and Case T‑331/09 Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN) [2010] ECR II‑0000, paragraph 26). Contrary to what the Board of Appeal stated in paragraph 30 of the contested decision, that finding applies even where pharmaceutical preparations are available to consumers over the counter, since those goods relate to their health. Likewise, the relevant public displays a relatively high level of attention with regard to veterinary preparations in so far as they affect the state of health of animals. Lastly, the relevant public’s level of attention in respect of sanitary preparations in Class 5, without being high, is above average, since those preparations include both goods intended for everyday use and goods intended for medical use.
The comparison of the goods
37 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to them should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
38 In the present case, the Board of Appeal found, in paragraphs 21 to 23 of the contested decision, that the ‘pharmaceutical preparations [and] veterinary preparations’ covered by the mark applied for were identical to the ‘pharmaceutical preparations’ protected by the earlier mark. It stated, inter alia, that the designation ‘pharmaceutical preparations’ had to be understood as a broad term which includes goods intended for the treatment of animals. As regards the ‘sanitary preparations’ covered by the mark applied for, the Board of Appeal took the view, in paragraph 24 of the contested decision, that these could have a medical use and that they were, at least, highly similar to the ‘pharmaceutical preparations’ covered by the earlier mark.
39 The applicant claims that veterinary preparations and pharmaceutical preparations are clearly different since they are not aimed at the same public, do not share the same distribution channels and are neither interchangeable nor complementary. In addition, it submits that there is only a low degree of similarity between sanitary preparations and pharmaceutical preparations in so far as their complementary nature is limited, they are very different in nature and are neither interchangeable nor in competition with each other. Furthermore, sanitary preparations are marketed through a wider range of distribution channels than pharmaceutical preparations.
40 OHIM and the intervener share the assessment of the Board of Appeal.
41 In the first place, it must be stated that the marks at issue both cover ‘pharmaceutical preparations’ in Class 5. Those goods must therefore be regarded as identical.
42 In the second place, as regards the ‘veterinary preparations’ covered by the mark applied for, it must be observed that, as the Board of Appeal correctly pointed out in paragraph 23 of the contested decision, the category of ‘pharmaceutical preparations’ protected by the earlier mark is a broad and generic category which includes both pharmaceutical preparations for human use and those for veterinary use. According to settled case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 34 and the case-law cited).
43 The applicant’s contention that the category of ‘pharmaceutical preparations’ in Class 5 covers exclusively goods intended for the treatment of human beings is not supported either by the International Classification of Goods and Services for the Purposes of the Registration of Marks established by the Nice Agreement or by the case-law. In any event, even if that contention were correct, the fact would nonetheless remain that pharmaceutical preparations and veterinary preparations are highly similar, since they are the same in nature (healthcare products), have the same purpose (the treatment of health problems), are aimed in part at the same consumers (in particular, healthcare professionals, such as pharmacists, and the general public), are manufactured by the same economic operators (pharmaceutical companies) and share in part the same distribution channels (pharmacies and, in certain cases, supermarkets).
44 In the third place, as regards the ‘sanitary preparations’ in Class 5 covered by the mark applied for, it must be stated that, as the Board of Appeal correctly pointed out in paragraph 24 of the contested decision, the explanatory notes to the list of classes of goods and services in the Nice Agreement state that Class 5 includes, in particular, sanitary preparations for medical purposes and for personal hygiene, but does not include sanitary preparations for personal hygiene which are toiletries, which are covered rather by Class 3. A relatively high degree of similarity must be regarded as existing between ‘sanitary preparations’, as thus defined, and ‘pharmaceutical preparations’. Those two categories of goods are aimed at the same public (healthcare professionals and end consumers) and have the same intended purpose, being intended, inter alia, for use in medical treatment or in a surgical operation. They are also the same in nature, given that they are perceived by consumers as goods belonging to the same general category of goods for healthcare. Furthermore, they are closely complementary, in so far as certain sanitary preparations for medical use, such as antiseptics or antibacterial lotions, may prove to be indispensable when certain pharmaceutical preparations are administered. Lastly, they may be manufactured by the same economic operators (pharmaceutical companies) and are sold in the same establishments, that is to say, mainly pharmacies but also, sometimes, supermarkets.
45 It follows from the foregoing that the goods at issue must be considered to be in part identical and in part very similar.
The comparison of the signs
46 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
47 In present case, the marks at issue are, on the one hand, the earlier word mark ZIMBUS and, on the other hand, the word mark applied for, ZYDUS.
48 The Board of Appeal stated, in paragraph 26 of the contested decision, that, visually, the dissimilarities between the marks at issue outweigh the similarities. More specifically, it took the view that the beginning of each of the two signs, which primarily holds the consumer’s attention, is clearly different. Phonetically, the Board of Appeal took the view, in paragraph 27 of the contested decision, that, at least in some languages of the European Union, such as Spanish, Portuguese and Italian, the marks at issue exhibit a notable degree of similarity. Lastly, in paragraph 28 of the contested decision, it stated that the marks at issue have no meaning in any of the languages of the European Union.
49 The applicant submits, in essence, that the Board of Appeal erred in concluding that the marks at issue are phonetically similar. The applicant’s complaint is that the Board of Appeal broke down those marks into three parts, although each of them has two syllables. Furthermore, the Board of Appeal failed to take into account the phonetic distinction created as a result of the presence of the letter ‘m’ in the earlier mark. Lastly, the Board of Appeal erroneously concluded that the pronunciation of the final syllables of the marks at issue is identical.
50 OHIM shares the Board of Appeal’s analysis. During the hearing it added that the marks at issue produced the ‘same general visual impression’. The intervener takes the view that the marks at issue are similar not only phonetically, but also visually.
51 In the first place, as regards the assessment of visual similarity, first, it must be borne in mind that, according to the case-law, where a dispute relating to the assessment, by the Board of Appeal, of the likelihood of confusion between two signs is brought before it, the Court is competent to examine the Board of Appeal’s assessment of the similarity of the signs at issue, even if the applicant does not specifically dispute that point, since the Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal (see, to that effect, Case C‑16/06 P Éditions Albert René v OHIM [2008] ECR I‑10053, paragraphs 47 and 48). It follows that the Court is also competent to examine the Board of Appeal’s assessment of the visual similarity of the signs at issue even if the arguments put forward by the applicant, as regards the similarity of those signs, were limited to the phonetic aspects of that assessment.
52 Secondly, it must be pointed out that the mark ZIMBUS and the mark ZYDUS consist of a single word comprising almost the same number of letters, namely, six and five respectively. Those marks begin with the same letter ‘z’ and end in the same group of letters ‘us’. Furthermore, as the intervener correctly points out, the letters ‘b’ (in the case of the earlier mark) and ‘d’ (in the case of the mark applied for), which directly precede that group of letters, are themselves very similar. In that regard, it must be borne in mind that, according to the case-law, in relatively short word signs, the elements at the beginning and end of the sign are as important as the central elements (see judgment of 16 September 2009 in Case T‑221/06 Hipp & Co v OHIM – Laboratorios Ordesa (Bebimil), not published in the ECR, paragraph 47 and the case-law cited). Consequently, in visual terms, the only notable difference between the marks at issue is the presence, between their initial letter and their three final letters, of the letters ‘i’ and ‘m’ (in the case of the earlier mark) and of the letter ‘y’ (in the case of the mark applied for). In the context of the overall visual assessment of the marks at issue, that difference is not, however, sufficient to preclude all visual similarity between those marks. In that regard, it must be borne in mind that the consumer is deemed only rarely to have the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).
53 Consequently, it must be held, as had the Opposition Division in its decision of 31 May 2007, that there is a certain degree of visual similarity between the marks at issue.
54 In the second place, as regards the phonetic comparison of the marks at issue, first, it must be pointed out that each of them consists of two syllables. Secondly, it must be stated that in several European Union languages, including Spanish and Portuguese, the letters ‘i’ and ‘y’ are pronounced identically, with the result that the marks at issue begin with the same sound ‘zi’. Furthermore, as OHIM correctly points out, the first syllables of those marks, that is to say, ‘zim’ and ‘zy’, respectively, are very close phonetically in so far as the sound produced by the letter ‘m’ at the end of the first syllable of the earlier mark is absorbed by that produced by the consonant ‘b’, which directly follows that letter and is more audible. The fact that the letter ‘m’ is not present in the first syllable of the mark applied for cannot therefore call into question the Board of Appeal’s finding that the marks at issue are phonetically similar. Lastly, it must be pointed out that those marks end in the same sound ‘us’. It is true that the group of letters ‘us’ is preceded by the letter ‘b’ in the case of the earlier mark and by the letter ‘d’ in the case of the mark applied for and that those two letters are pronounced differently. However, as OHIM correctly points out, that difference will go unnoticed by most consumers since it affects the second syllable of each of the marks at issue and that is not the syllable on which the main stress falls. In particular in Spanish and Portuguese, if a word contains only two syllables, the main stress falls, as a general rule, on the first syllable. In the present case, consumers will therefore remember more the fact that the marks at issue have a very similar beginning and ending.
55 Consequently, the Board of Appeal’s finding that there is a strong phonetic similarity between the marks at issue, at least in some languages of the European Union, such as Spanish and Portuguese, must be upheld.
56 In the third place, as regards the conceptual comparison of the marks at issue, it must be stated that neither of them has a meaning linking it to a specific concept. For that reason, they are not conceptually comparable.
57 It follows from the foregoing that the marks at issue have a certain degree of visual similarity and, at least for part of the relevant public, a strong degree of phonetic similarity, and that they have no meaning conceptually. Consequently, they must be regarded as similar overall.
The likelihood of confusion
58 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and VENADO with frame and Others, paragraph 74).
59 In the present case, the Board of Appeal found, in paragraphs 29 to 33 of the contested decision, that there was a likelihood of confusion between the marks at issue after pointing out, inter alia, that the goods at issue were in part identical and in part highly similar and that the similarity of the marks in phonetic terms was of increased importance as pharmaceutical preparations are often sold orally. The Board of Appeal added that the relevance of the visual dissimilarities was not great in the overall impression conveyed by the marks at issue.
60 The applicant disputes that assessment. First of all, it reasserts that the marks at issue are not similar. Secondly, as regards pharmaceutical preparations, it submits that the visual impression generated by the marks concerned is the defining criterion when assessing the likelihood of confusion, that the level of attention of the relevant public is high, and that the visual differences between the marks at issue are sufficient to avoid any likelihood of confusion. Furthermore, as regards veterinary preparations, the applicant reiterates that there is only a low degree of similarity between those preparations and the pharmaceutical preparations and submits that the level of attention on the part of the relevant public is higher than average. Lastly, as regards sanitary preparations, the applicant reiterates that there is only a low degree of similarity between those preparations and the pharmaceutical preparations and maintains that they are sold arranged on shelves, with the result that the consumer is additionally guided by the visual impact of the trade mark that he is looking for.
61 OHIM and the intervener share the Board of Appeal’s analysis.
62 In the present case, having regard to the fact that, first, the goods at issue are in part identical and in part very similar and, secondly, the marks at issue are similar overall, it must be held that the Board of Appeal was correct in law in finding that there was a likelihood of confusion between those marks, even though, as was stated in paragraph 36 above, the relevant public’s level of attention is higher than average (in respect of sanitary preparations) or relatively high (in respect of pharmaceutical and veterinary preparations). That finding is borne out by the fact – correctly pointed out by OHIM – that the earlier mark is endowed with a higher than normal degree of distinctiveness as it is a created and invented sign with no particular meaning.
63 The foregoing considerations are not called into question by the applicant’s argument that, given that pharmaceutical preparations and sanitary preparations are not generally purchased orally, the phonetic similarity between the marks at issue is of limited significance.
64 Admittedly, according to settled case‑law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market (Case T‑129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraph 57, and Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 49). The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by them are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49).
65 In the present case, the relevant consumers are faced both visually and phonetically with the marks designating the goods at issue. There is no factor which makes it possible to attribute a preponderant weight to the visual aspect or, conversely, to the phonetic aspect in the overall assessment of the likelihood of confusion. In certain cases, those goods are sold by means of self-service in commercial establishments (pharmacies, supermarkets or specialist shops) by being placed on shelves where they may be examined by consumers. In other cases, for example if what are involved are pharmaceutical or veterinary preparations dispensed exclusively on prescription or goods sold over the counter but kept in a place which is not directly accessible to the public, the purchases are made with the assistance of a professional and involve a verbal reference to the marks concerned.
66 In any event, even if one were to assume that the goods at issue – including veterinary preparations, which the applicant does not refer to in the argument currently being examined – are usually purchased without the name of the mark having to be pronounced, and the visual aspect is therefore of greater importance in the overall assessment of the likelihood of confusion, the Board of Appeal’s finding that such a likelihood exists would still be fully justified because, as was stated in paragraphs 52 and 53 above, the marks at issue indeed also display a certain degree of visual similarity.
67 It follows from all of the foregoing that the single plea in law must be rejected, and consequently the action must be dismissed.
Costs
68 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 intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the application for a ruling that there is no need to adjudicate;
2. Dismisses the action;
3. Orders Cadila Healthcare Ltd to pay the costs.
Papasavvas | Vadapalas | O’Higgins |
Delivered in open court in Luxembourg on 15 March 2012.
[Signatures]