JUDGMENT OF THE GENERAL COURT (Second Chamber)
15 November 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark NORMOCARE – Earlier national word mark NOMOR – Relative ground for invalidity – Article 60(1)(a) and Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑19/23,
Laboratorios Normon, SA, established in Tres Cantos (Spain), represented by I. González-Mogena González, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by N. Lamsters and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Sofar SpA, established in Trezzano Rosa (Italy),
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Laboratorios Normon, SA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 October 2022 (Case R 916/2022-1) (‘the contested decision’).
Background to the dispute
2 On 20 October 2020, the other party to the proceedings before the Board of Appeal of EUIPO, Sofar SpA, filed an application for a declaration of invalidity with EUIPO in respect of the EU trade mark of the applicant, Laboratorios Normon, SA, a trade mark which had been registered on 8 June 2018 following an application filed on 2 February 2018 in respect of the word sign NORMOCARE (‘the contested mark’).
3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 3 and 5 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 corresponded, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, hair lotion; non-medicated dentifrices’;
– Class 5: ‘Pharmaceutical preparations for medical and veterinary use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.
4 The application for a declaration of invalidity was based on the earlier Italian word mark NOMOR, which was registered on 8 November 2016 and covers goods in Classes 3 and 5 corresponding, for each of those classes, to the following description:
– Class 3: ‘Protective creams; moisturizing creams’;
– Class 5: ‘Ointments for pharmaceutical purposes; pharmaceutical creams; medicated ointments for application to the skin; hemorrhoidal ointments; pharmaceutical preparations for dermatological treatments’.
5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a) and Article 8(1)(b) of 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).
6 On 25 March 2022, the Cancellation Division partially upheld the application for a declaration of invalidity of the contested mark in respect of the following goods:
– Class 3: ‘Non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, hair lotion; non-medicated dentifrices’;
– Class 5: ‘Pharmaceutical preparations for medical and veterinary use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals; plasters, materials for dressings; disinfectants’.
7 In essence, the Cancellation Division found that, since the goods referred to in paragraph 6 above were identical or ‘similar to at least an average degree’ to those protected by the earlier mark, there was a likelihood of confusion, on account of the overall visual and phonetic similarities between the signs. By contrast, it rejected the application for a declaration of invalidity in respect of the other goods.
8 On 24 May 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division, requesting that that decision be annulled ‘in its entirety’.
9 By the contested decision, the Board of Appeal, first of all, found that the scope of the appeal was limited to the goods listed in paragraph 6 above, in respect of which the contested mark had been declared invalid by the Cancellation Division. It then dismissed that appeal on the ground that there was a likelihood of confusion between the signs, from the perspective of the Italian public, even taking into account the higher than average or high level of attention, with regard to all the contested goods, including those that had been found to be similar to an average degree to the goods protected by the earlier mark.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
Law
12 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, read in conjunction with Article 60(1)(a) of that regulation.
13 In essence, the applicant submits that the Board of Appeal carried out an incorrect comparison of the marks, which have sufficient phonetic, conceptual and visual differences to be able to coexist without giving rise to a likelihood of confusion.
14 Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, provides that, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, earlier trade marks means, inter alia, trade marks registered in a Member State.
15 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. 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).
16 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 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).
The matters in the contested decision which are not disputed
17 In the first place, as regards the relevant public, the Board of Appeal found, first of all, that the goods concerned, which have been referred to in paragraph 6 above, were aimed at the general public, as well as at professional customers with specific professional knowledge or expertise, and that the level of attention of that public could vary from average to high. Next, it stated that the likelihood of confusion had to be assessed by reference to the public which was least attentive, namely, in the present case, the general public, the level of attention of which could vary ‘from average’ (some goods in Class 3) to ‘higher than average’ (some goods in Class 3 and some goods in Class 5, in particular where they could directly affect human health), but which was not as high as for professionals. Lastly, it found that, since the earlier mark was registered in Italy, the territory of that Member State was relevant in the present case. There is no need to call that assessment, which is not, moreover, disputed by the parties, into question.
18 In the second place, the Board of Appeal endorsed the Cancellation Division’s finding that the goods in question were in part identical and in part similar to an average degree. There is no need to call that assessment, which is not, moreover, disputed by the parties, into question.
The comparison of the signs
19 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
Preliminary considerations relating to the earlier mark
20 As a preliminary point, it must be stated that, as pointed out by the applicant and acknowledged by EUIPO, in paragraphs 29 to 31 of the contested decision, the Board of Appeal incorrectly referred to the earlier mark as being NOMRON instead of NOMOR (see paragraph 4 above). Such a clerical mistake does not affect the legality of the contested decision, since the earlier mark is correctly spelt and examined as NOMOR in the rest of the contested decision.
The distinctive elements of the contested mark
21 According to the case-law, for the purposes of determining the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE), T‑234/17, not published, EU:T:2018:259, paragraph 38).
22 In the present case, the Board of Appeal found that, taken as a whole, the word ‘normocare’ forming the contested mark was, for the relevant Italian public, an invented word. However, it took the view that consumers would break that mark down into two word elements which suggested a specific meaning or which resembled words known to them.
23 Thus, first, according to the Board of Appeal, the word element ‘normo’ of the contested mark could be reminiscent of the Italian word ‘norma’, meaning ‘norm’, which could be understood to refer to a ‘normalising’ effect of some of the goods in question, such as ‘creams’ and other ‘non-medicated cosmetics.’ Therefore, its distinctive character might be reduced with respect to those goods. On the other hand, it had a normal distinctive character for goods which did not have an immediate normalising effect, such as ‘plasters’ or ‘dietetic food’.
24 The word element ‘care’ corresponds, according to the Board of Appeal, to the English word ‘care’, which will be understood by the relevant Italian public and thus, in the context of the goods in question, the Italian public will perceive it as strongly alluding to their purpose, namely that of providing care to humans or animals. Therefore, that word element has at best a weak distinctive character, since it refers to the essential purpose of the goods in Class 3 and some of the goods in Class 5, to which the same concept of care can be applied.
25 The applicant also claims that the contested mark consists of two word elements, each of which has its own meaning. It submits, first, that it has used the word element ‘normo’ extensively in so far as it corresponds to the main word making up its company name and coincides with numerous other marks which it has registered at national, international and EU level, forming a large family of trade marks. It asserts, second, that the word element ‘care’, which accompanies the word element ‘normo’, is a distinctive element to be taken into account in the comparison with the earlier mark. Therefore, the contested mark could mean ‘normo care’, as the Board of Appeal also acknowledges, whereas the earlier mark does not have any meaning. However, the applicant objects to the artificial breakdown of the contested mark into words which do not have any meaning in Italian. In particular, the Board of Appeal took into account the meaning of the English word ‘care’ for the word element ‘care’, even though in Italian that word means ‘dear/dears’.
26 EUIPO disputes the applicant’s arguments.
27 With regard to the word element ‘normo’ of the contested mark, the applicant submits that that word element is associated by the relevant public with its company name. In that regard, it must be stated that the applicant has not adduced any evidence that the word ‘normon’, which forms its company name, was renowned or enjoyed enhanced recognition from the relevant Italian public. Therefore, there is no factual basis for concluding that relevant consumers would perceive that word element as a reference to that company. On the contrary, as the Board of Appeal pointed out, it is possible that the Italian public will perceive the word element in question as referring to the idea of a norm. Therefore, as the Board of Appeal rightly points out, the distinctive character of the word ‘normo’ must be regarded as reduced for some of the goods in question due to the reference to the concept of ‘normalisation’ and as normal for the other relevant goods (see paragraph 23 above).
28 That conclusion is not invalidated by the applicant’s claims relating to the alleged existence of a family of trade marks containing the words ‘normo’ or ‘normon’, in so far as they should be understood as seeking to reinforce the distinctive character of the word element ‘normo’ of the contested mark. In that regard, it should be noted that the mere fact of listing a multitude of registered trade marks containing a common basis, namely the prefix ‘normo’ or ‘normon’, is not sufficient, according to the case-law, to invoke the existence of a series of trade marks. The proprietor of a series of earlier registrations must, in particular, furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. For there to be a likelihood of the public being mistaken as to whether a trade mark belongs to the series, the earlier marks forming part of that series must necessarily be present on the market (see, to that effect, judgment of 27 June 2012, Hearst Communications v OHIM – Vida Estética (COSMOBELLEZA), T‑344/09, not published, EU:T:2012:324, paragraph 86).
29 The word element ‘care’ of the contested mark could be understood, at least by part of the relevant Italian public, as referring to the English word ‘care’, as found by the Board of Appeal and acknowledged by the applicant (see paragraphs 24 and 25 above), with the result that its distinctive character is at most only weak, since it relates to the intended purpose of the goods in question (see, to that effect, judgment of 6 April 2022, Moio v EUIPO – Paul Hartmann (moio.care), T‑276/21, not published, EU:T:2022:221, paragraphs 60 and 61). That finding is not invalidated by the applicant’s claim that the relevant public may also perceive the Italian word ‘care’, meaning ‘dears’. In particular, it should be noted that, in the light of the goods in question, all of which are related to hygiene, or are pharmaceutical products, dietetic foods, disinfectants, plasters or materials for dressings (see paragraph 6 above), it is reasonable to consider that a significant proportion of the Italian consumers will take account of the reference to the English word ‘care’. Accordingly, the applicant’s claim that the Board of Appeal ‘artificially’ divided the contested mark on the basis of elements which have no meaning in Italian and are part of English vocabulary must also be rejected as unfounded (see paragraph 25 above).
30 Furthermore, it is not disputed that the earlier mark has no meaning for the relevant public, which will perceive it as an invented term with a normal distinctive character in relation to the goods in question.
The similarity of the signs
31 Visually, according to the Board of Appeal, the signs at issue coincide in the sequence of the upper-case letters ‘NO’, as well as in the string of upper-case letters ‘MO’, although the latter are in a different position. They share the upper-case letter ‘R’, but again in different positions. Furthermore, they differ in the word element ‘care’ of the contested mark, which has a weak distinctive character in relation to the goods in question, if any. They produce a similar overall impression, since the word elements ‘normo’ and ‘nomor’ have the same number of letters, with three out of five letters placed in a different position, creating an overall similarity in that one is the anagram of the other. Taking into account also the fact that the sequence of upper-case letters ‘NO’ is placed at the beginning of those signs, on which consumers tend to focus, the similarities could also not be counteracted by the presence of the word element ‘care’ of the contested mark, taking into account its at best weak distinctive character. Therefore, the signs at issue are visually similar to an average degree.
32 Phonetically, in essence, the Board of Appeal found that, due to the different lengths, rhythms and intonations of the signs at issue, they had a low degree of similarity.
33 Conceptually, according to the Board of Appeal, the contested mark recalls the concepts described in paragraphs 23 and 24 above, whereas the earlier mark does not convey any concept. Consequently, the signs at issue are not conceptually similar.
34 The applicant submits, in essence, that the visual similarities are offset by the differences in the length of the signs at issue, the letters of which they are composed and their order. Phonetically, those signs are pronounced completely differently. They also differ conceptually.
35 EUIPO disputes the applicant’s arguments.
36 It should be noted that, in so far as the word element ‘normo’ of the contested mark constitutes an anagram of the earlier mark, where their first two letters coincide and where the word element ‘care’ in the contested mark has only a weak distinctive character, the Board of Appeal was right to find that there was an average degree of visual similarity.
37 Phonetically, given the similarities at the beginning of the signs at issue, it can be concluded that there is a low degree of similarity, notwithstanding the presence of the word element ‘care’ in the contested mark.
38 Conceptually, if one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, the marks at issue must be found to be conceptually dissimilar (see, to that effect, judgment of 19 September 2017, RP Technik v EUIPO – Tecnomarmi (RP ROYAL PALLADIUM), T‑768/15, not published, EU:T:2017:630, paragraphs 88 and 89). In the present case, as is apparent from paragraphs 23, 24, 27 and 29 above, for part of the relevant public, the fanciful term ‘normocare’ which forms the contested mark has a certain evocative force when taken as a whole, since it refers to the concepts of ‘care’ and ‘normalisation’, which are therefore together capable of jointly evoking the concept of ‘normalising care’. On the other hand, as is apparent from paragraph 30 above, the earlier mark has no meaning for the relevant public. It therefore follows from the foregoing that the Board of Appeal rightly concluded that the signs at issue were not conceptually similar.
The likelihood of confusion
39 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 that 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 (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
40 In the present case, the Board of Appeal found that the goods in question were either identical or similar to an average degree. Furthermore, according to the Board of Appeal, the signs at issue were visually similar to an average degree and phonetically similar to a low degree, but were not conceptually similar. The distinctive character of the earlier mark was normal.
41 As regards the increased level of attention of the Italian general public with regard to the signs under comparison, according to the Board of Appeal, even highly attentive consumers generally do not have the chance to make a direct comparison between the marks and would therefore have to rely on their imperfect recollection of them. Taken in isolation, the increased level of attention was therefore not capable of ruling out the existence of a likelihood of confusion. Since the difference between the signs at issue concerned the position of the letters, the additional weakly distinctive word element of the contested mark cannot be considered as being sufficient to ensure that the trade marks are distinguished with certainty from one another.
42 In so far as the applicant also relied on the fact that it owned several registrations starting with the term ‘normo’, including its company name, and that they coexisted with the earlier mark, the Board of Appeal noted that the formal coexistence of marks on national or EU registries is not per se particularly relevant. The Board of Appeal stated that, in the present case, there were no convincing arguments or evidence to support the conclusion that the marks at issue actually coexisted on the market, which would have indicated that consumers were accustomed to seeing the marks without confusing them.
43 Therefore, taking into account the interdependence of the various factors at play, the Board of Appeal found that there was a likelihood of confusion on the part of the relevant public for all the goods in question, including those found to be similar to an average degree to the goods protected by the earlier mark.
44 According to the applicant, there is no likelihood of confusion since the upper-case letter ‘R’ is placed in different positions in the signs at issue and the word element ‘care’ is present only in the contested mark, factors which constitute significant differences at all levels of comparison. The applicant also stressed the coexistence of the family of trade marks to which the contested mark belonged with the earlier mark.
45 Thus, on the whole, the applicant maintains that the marks at issue could coexist, since they had only a low degree of visual similarity, a low degree of phonetic similarity and had no conceptual similarity or were even conceptually different. In addition to the existence of the family of trade marks including the word ‘normo’ or ‘normon’, it also refers to numerous decisions taken by EUIPO in favour of the protection of some of those marks, which had long been registered ‘in the territory of the European Union’, in particular in Spain, before the earlier mark was registered in Italy. Some of those marks were, moreover, relied on in support of the parallel opposition proceedings No B003123753 before EUIPO against EU trade mark No 18197070 NOMOR.
46 EUIPO disputes the applicant’s arguments.
47 It must be held that, on account of the factors taken into consideration by the Board of Appeal, in particular the average degree of visual similarity, the low degree of phonetic similarity, the identity or similarity of the goods in question, and the fact that the relevant public only rarely had the chance to make a direct comparison between the marks but had to place its trust in the imperfect picture of them it has kept in its mind, and in view of the average degree of distinctive character of the earlier mark, it was fully entitled to find that there was a likelihood of confusion on the part of the relevant public. In the light of all those various factors, contrary to what is alleged by the applicant, the absence of conceptual similarity between the marks at issue is not such as to preclude the existence of a likelihood of confusion.
48 Nor is that finding invalidated by the applicant’s claim relating to the alleged coexistence of the contested mark and the earlier mark on the relevant market.
49 It is true that, according to the case-law of the Court of Justice, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public. The absence of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (see judgment of 12 July 2019, Ogrodnik v EUIPO – Aviário Tropical (Tropical), T‑276/17, not published, EU:T:2019:525, paragraph 79 and the case-law cited).
50 However, that possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the proprietor of the contested mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the mark upon which it relies and the mark of the other party to the proceedings on which the opposition is based, and provided that the mark upon which it relies and the mark at issue are identical. To that end, it is open to such a proprietor to put forward a body of evidence to that effect. In that regard, evidence demonstrating that the relevant public recognised each of the trade marks at issue before the time when the application for registration of the contested mark was filed is particularly relevant. In addition, in so far as, according to the case-law, the coexistence of two trade marks must be sufficiently lengthy to be capable of influencing the perception of the relevant consumer, the duration of the coexistence also constitutes an essential factor (see judgment of 12 July 2019, Tropical, T‑276/17, not published, EU:T:2019:525, paragraph 80 and the case-law cited).
51 Therefore, the applicant cannot be released from its obligation to demonstrate that the peaceful coexistence on which it relies is based on the absence of any likelihood of confusion between the marks at issue on the part of the relevant public; that demonstration may be made by way of a body of evidence (see, to that effect, judgment of 12 July 2019, Tropical, T‑276/17, not published, EU:T:2019:525, paragraph 81). It is clear that the applicant has not provided any specific evidence demonstrating such coexistence, based on the absence of a likelihood of confusion in the relevant territory. On the contrary, some of the evidence relied on appears to demonstrate the contrary, such as the reference to opposition proceedings between some of its marks and EU trade mark No 18197070 NOMOR (see paragraph 45 above).
52 Lastly, as regards the applicant’s claim based on the existence of numerous decisions taken by EUIPO in favour of the protection of some of those marks containing the word ‘normo’, which had long been registered ‘in the territory of the European Union’, in particular in Spain, it must be stated, first, that there is no peaceful coexistence with other marks. Secondly, in so far as some of those decisions, cited by the applicant, tend rather to support the argument that there is a likelihood of confusion between different marks containing the prefix ‘normo’ (see, for example, the decision of the Fifth Board of Appeal of 29 July 2016 in Case R 739/2015-5, Actavis Group PTC v Laboratorios Normon, S.A.), they cannot effectively support the applicant’s position in the present case, in particular, by taking into account the fact that the earlier mark and the prefix ‘normo’ are anagrams. (see paragraph 36 above).
53 In the light of all of the foregoing considerations, since the single plea in law relied on by the applicant in support of its claims must be rejected, the action must be dismissed in its entirety.
Costs
54 Under Article 134(1) 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.
55 In the present case, although the applicant has been unsuccessful, EUIPO has requested that it be ordered to pay the costs only in the event that a hearing is organised. Since no hearing has been held, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Laboratorios Normon, SA and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Marcoulli | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 15 November 2023.
V. Di Bucci | | M. van der Woude |