JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
8 July 2009 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ESTER‑E – Earlier Community figurative mark ESTEVE – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑230/07,
Laboratorios Del Dr. Esteve, SA, established in Barcelona (Spain), represented by K. Manhaeve, lawyer,
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 Court of First Instance, being
The Ester C Company, established in Prescott, Arizona (United States), represented initially by R. Bird, Solicitor, and subsequently by H. Wistam, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 April 2007 (Case R 737/2006‑2) concerning opposition proceedings between Laboratorios Del Dr. Esteve, SA and The Ester C Company,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of O. Czúcz, President, I. Labucka (Rapporteur) and K. O’Higgins, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 2 July 2007,
having regard to the response of OHIM lodged at the Registry on 1 October 2007,
having regard to the response of the intervener lodged at the Registry of the Court on 26 September 2007,
further to the hearing on 26 November 2008,
gives the following
Judgment
Background to the case
1 On 13 May 2003, the intervener, The Ester C Company, filed an application for a Community trade mark at 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 That application was for registration of the word sign ESTER‑E.
3 The goods in respect of which registration was sought are 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 correspond, respectively, to the following descriptions:
– Class 3: ‘Cosmetics’;
– Class 5: ‘Vitamin and mineral supplements’.
4 The application for registration was published in Community Trade Marks Bulletin No 12/2004 of 22 March 2004.
5 On 18 June 2004, the applicant, Laboratorios Del Dr. Esteve, SA, filed a notice of opposition against the application for registration, based on the following prior registrations:
– Community figurative mark No 1701523 (‘the earlier Community mark’), represented below,
lodged on 9 June 2000 and registered on 28 June 2001 for the following goods:
– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’;
– Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;
– Class 42: ‘Medical and pharmaceutical services, scientific research’.
– Spanish figurative mark No 2062829, represented below,
registered on 20 February 1998 for goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances for medical purpose, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;
– Spanish word mark No 160118 ESTEVE-LABORATORIO DEL DR. ESTEVE S.A., registered on 4 October 1945 for goods in Class 5 corresponding to the following description: ‘Hygienic products; dietetic substances for medical purpose, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides’.
6 The opposition related to all goods covered by the prior registrations and was filed against the goods covered by the mark applied for in Class 5. The ground relied on in support of the opposition was the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).
7 By decision of 27 March 2006, the Opposition Division upheld the applicant’s opposition and rejected the trade mark application in respect of the contested goods in Class 5, namely ‘vitamin and mineral supplements’, because of their similarity to the goods covered by the earlier Community mark.
8 On 29 May 2006, the intervener appealed, 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.
9 By decision of 17 April 2007 (‘the contested decision’), the Second Board of Appeal set aside the decision of the Opposition Division and rejected the opposition in its entirety, on the ground that the conceptual differences between the mark applied for and the earlier Community mark counteracted the visual and phonetic similarities between them so as to dispel any likelihood of confusion.
Procedure and forms of order sought
10 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM and the intervener, jointly and severally, to pay the costs.
11 OHIM contends that the Court of First Instance should:
– dismiss the action;
– order the applicant to pay the costs.
12 The intervener contends that the Court of First Instance should:
– confirm the contested decision;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant puts forward a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
14 As regards the relevant public, the applicant considers that the goods at issue are intended to be sold to the general public, that is to say, to average consumers who are deemed to be reasonably observant and circumspect. There is therefore no reason to assume, as the Board of Appeal did, that the consumer’s level of attention would be ‘rather sustained’.
15 OHIM contends that the relevant public consists of consumers throughout the European Union and embraces at the same time health professionals (doctors and pharmacists) and end-users, both categories having a high degree of attentiveness since the goods at issue are pharmaceuticals.
16 The intervener supports the arguments put forward by OHIM, adding that the relevant public will also apply a high degree of attentiveness as regards baby food.
17 With regard to the goods at issue, the applicant considers that, since they have the same purpose, end-users and distribution channels and since ‘vitamin and mineral supplements’ are included in the general categories ‘pharmaceutical preparations’, ‘dietetic substances adapted for medical use’ and ‘food for babies’ in Class 5 covered by the earlier Community mark, the goods can be regarded as identical. It also argues that the goods covered by the two marks may be complementary or in competition with each other, and concludes from all the foregoing that the goods in question are identical, or at least highly similar.
18 OHIM notes that the Board of Appeal considered the ‘dietetic substances adapted for medical use’ covered by the earlier Community mark to be similar to the ‘vitamin and mineral supplements’ covered by the mark applied for. This is not challenged by the applicant.
19 At the hearing, enlarging upon the case it made in its response, the intervener argued that the goods at issue were not particularly similar and that therefore it was a question of a degree of similarity between the goods.
20 As regards comparison of the signs and, in particular, of the visual similarities, the applicant points out that five of the six letters in the signs are identical and are used in the same order, with the fifth letter of the earlier Community mark consisting of a ‘v’ while, for the mark applied for, this is an ‘r’ followed by a hyphen. The figurative element of the earlier Community mark consists in the use of a slightly ‘fancy’ typeface and in the fact that the introductory ‘e’ contains two wavy lines in the middle. These graphic elements are none the less quite common and can at most be regarded as decorative. They do not therefore make that mark particularly distinctive. The applicant concludes from this that the visual similarity between the marks at issue is very high.
21 OHIM considers that the structure of the signs is significantly different, giving a distinct visual configuration: the earlier Community mark consists of a single word whereas the sign applied for has two separate components. The stylisation of the letter ‘e’ in the earlier Community mark is an element which supports the visual differentiation of the sign.
22 The intervener also considers that the stylisation of the earlier Community mark reduces considerably any visual similarity with the mark applied for. It concludes that the overall structure and pattern of the two marks, and the visual impression created by them, are therefore quite distinct.
23 Concerning the phonetic comparison of the signs, the applicant considers that the marks are highly similar phonetically. OHIM, and the Board of Appeal in the contested decision, recognise that phonetically the signs are similar.
24 That position is challenged by the intervener, which asserts that, due to the presence of the hyphen, the mark applied for will necessarily be pronounced as two separate components, with a second stress also falling on the ultimate component ‘e’.
25 From the conceptual point of view, the applicant considers in essence that it is not possible to compare the two marks. The Board of Appeal took insufficient account of the fact that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, there is no reason whatsoever to assume that the average consumer would spontaneously limit his assessment of the mark applied for to the latter’s ‘ester’ component and would regard this as a girl’s name.
26 OHIM contends that consumers will recognise the mark applied for either as having a meaning in chemistry, for professional consumers, or, despite some variations in spelling, as a Biblical name. The addition of the component ‘-e’ enables a clear distinction to be made between the marks and leads to a further element of conceptual differentiation since that letter will probably be construed as a reference to vitamin E or to a substitute for such a type of vitamin. On the other hand, outside Spain the word ‘esteve’ will be seen as a fanciful, meaningless term that does not refer to a vitamin and will not be associated either with a chemical compound or with a girl’s name.
27 Consequently, according to OHIM, the signs are different overall from a conceptual point of view. Those conceptual differences, combined with the visual disparities resulting from the structure of the signs, are such that they counteract, at least to some extent, the impact of the phonetic similarities.
28 The intervener concurs with OHIM’s view.
29 As regards the assessment of the likelihood of confusion, the applicant argues that, given that the earlier Community mark and the mark applied for are very similar from a visual and phonetic point of view, that no relevant conceptual comparison can be made, and that the goods covered by the litigious trademarks are identical or at least highly similar, there is a likelihood of confusion between the two marks.
30 OHIM maintains that the Board of Appeal was justified in law in finding that the relevant professional and non-professional public throughout the Community, which is highly attentive, was not likely to believe that the goods in question came from the same undertaking or from economically-linked undertakings, having regard to the visual and above all the conceptual differences noted between the two conflicting signs, in spite of the similar nature of the goods covered by the two signs and the presence of their common sequence of letters ‘e’, ‘s’, ‘t’, ‘e’ and ‘e’.
31 OHIM considers also that the applicant’s argument that a conceptual difference would be imperceptible to the relevant public when the signs are pronounced cannot invalidate that conclusion because it was not claimed or shown that the goods at issue were sold primarily in response to an oral order, and the visual impact may moreover be more significant since these goods do not always require a prescription and can normally be bought off the shelves of a pharmacy or of any health store selling them.
32 The intervener considers that there is no likelihood of confusion as to the origin of the goods at issue.
Findings of the Court
33 As a preliminary, it should be observed that the OHIM Board of Appeal was right to conclude in paragraph 32 of the contested decision that it need examine only the earlier Community mark for the purposes of assessing the likelihood of confusion. The two earlier Spanish registrations on which the opposition was also based cover the same goods as those in Class 5 covered by the earlier Community mark. Moreover, the Spanish mark protected by registration No 2 062 829 is identical to the earlier Community mark. As far as Spanish registration No 160 118 is concerned, the addition of the element ‘-laboratorio del dr. esteve s.a.’ suggests at the very least that that sign does not have a higher degree of similarity to the mark applied than that of the earlier Community mark. Moreover, the relevant public would be defined in the same way if the assessment of the existence of a likelihood of confusion took into account the two earlier national trade marks. For these reasons, a separate examination of those earlier trade marks would not alter the finding that there was no likelihood of confusion.
The relevant public
34 According to 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 must 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 case-law cited).
35 Since the earlier mark was a Community mark, the relevant public consists of consumers throughout the European Union.
36 In the present case, the Board of Appeal rightly stated that, considering the nature of the goods concerned, being food supplements, the consumer’s level of attention would be rather sustained. It is apparent from case-law that the relevant public’s degree of attentiveness with regard to vitamins, food supplements, herbal, medical and pharmaceutical preparations is higher than average because consumers who are interested in that type of product take particular care of their health so that they are less likely to confuse different versions of such products (Case T‑202/04 Madaus v OHIM– Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraph 33).
37 Moreover, concerning the differentiation within the public mentioned by OHIM, it should be observed that, according to settled case-law, where the goods at issue are medicines, the relevant public is made up, on the one hand, of health professionals and, on the other hand, of patients as end-users of those goods (see judgment of 13 February 2008 in Case T‑146/06 Sanofi-Aventis v OHIM– GD Searle (ATURION) (not published in the ECR), paragraph 25, and judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL) (not published in the ECR), paragraph 27).
38 It should be noted in that regard that the goods at issue in this case are vitamin and mineral supplements. The applicant does not challenge the view expressed by OHIM and by the intervener that, even though those goods are normally sold without a medical prescription, they can be prescribed by a doctor as part of a therapeutic treatment.
39 Consequently, the relevant public in this case embraces both health professionals (doctors and pharmacists) and end-users, whose level of attentiveness is high.
Comparison of the goods
40 According to settled case-law, in assessing the similarity of the goods all the relevant factors which characterise the relationship between those goods should be taken into account, such factors including inter alia their nature, their end-users and their method of use and whether they are in competition with each other or are complementary (Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 32, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 33). Other factors may also be taken into account, such as distribution channels for the goods concerned (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 53).
41 In this case, the Board of Appeal, like the Opposition Division earlier, concluded that ‘vitamin and mineral supplements’ in Class 5, covered by the mark applied for, and ‘dietetic substances adapted for medical use’ in the same class and covered by the earlier Community mark were similar. The parties do not deny that the goods at issue are of the same nature, have the same end-users and are marketed through the same channels.
Comparison of the signs
42 As can be seen from consistent case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the signs in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM − Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47, and case-law cited).
43 When the signs are compared visually, as the applicant rightly observes, there is a similarity between the earlier Community mark and the mark applied for. Both marks consist of six letters, five of which are identical and are used in the same order. The difference in the spelling is in the fifth letter, a ‘v’, in the earlier Community mark and an ‘r’ followed by a hyphen in the mark applied for.
44 It should also be noted that the earlier Community mark consists of a figurative element, ‘esteve’, in bold and in a slightly ‘fancy’ typeface, with the particular feature that the initial ‘e’ contains two parallel wavy lines in the middle.
45 The word mark applied for ESTER-E consists of three elements: the word ‘ester’, a hyphen and the letter ‘e’. Notwithstanding the fact that the letters in both signs are in almost the same order, the differences resulting from the special typeface and the use of decorative elements in the earlier Community mark significantly diminish their similarity. It is also improbable that the structure of the mark applied for, which is unusual because of the presence of the hyphen, would escape the notice of the consumer.
46 The two marks do therefore have some visual similarity, which is not, however, high.
47 From the phonetic point of view, according to the applicant and OHIM, the two marks are phonetically similar.
48 With regard to the intervener’s argument that, due to the presence of the hyphen, the mark applied for will necessarily be pronounced as two separate components, with a second stress thus falling on the ultimate component ‘e’, it should be observed that it is unlikely that consumers would make a special effort to take into account the impact of the hyphen on pronunciation. Even if they split the mark applied for into two separate parts, it is impossible to predict the significance of that separation and the intensity of the stress that will fall on the last letter. Consequently, the presence of the hyphen contributes less to differentiating the marks in question phonetically than visually. The Board of Appeal was therefore right to find that the two marks were phonetically similar.
49 From the conceptual point of view, it should be observed first of all that the word ‘esteve’ has no meaning in any Community language apart from Spanish, in which it is a surname.
50 As regards the mark applied for ESTER-E, it is apparent from case-law that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see RESPICUR, paragraph 34 above, and case-law cited).
51 In this case, the Board of Appeal, in paragraph 25 of the contested decision, rightly held that the word ‘ester’ had an independent role within the mark applied for.
52 It is to be noted that there are two immediate associations that that word is deemed to evoke for the relevant public.
53 In the first place, it has a meaning in the field of chemistry, since an ester is an organic compound corresponding to a mineral salt and formed by reaction between an acid and an alcohol or a phenol with the elimination of water.
54 In the second place, to consumers unaware of its specific meaning in the field of chemistry, the word could evoke a well-known girl’s name, which, with minor variations, exists in all the Community languages. Those spelling variations would not have a decisive impact on the capacity of consumers to recognise the word ‘ester’ as being a girl’s name, particularly since it is well-known because of its Biblical origin, and the fact that Community consumers, taking advantage of the internal market of the Communities, are used to seeing and recognising words of foreign origin in Community trade marks.
55 With regard to the applicant’s argument that consumers will not recognise a girl’s name in connection with vitamin and mineral supplements, it must be pointed out that that has no relevance. The nature of the goods concerned would not influence the understanding and perception of the word describing it. Quite the contrary, consumers perceiving the word ‘ester’ as a girl’s name might think that the goods it describes are in fact mainly directed at women.
56 Consequently, it must be concluded that the earlier mark and the mark applied for are very different conceptually.
Likelihood of confusion
57 It should be noted that conceptual differences may in certain circumstances counteract to a large extent the visual and aural similarities between the marks. For them to do so, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello et Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 93, and case-law cited).
58 As was shown above, the word element ‘ester’ has two alternative and distinctive meanings that are likely to be grasped by the relevant public.
59 Moreover, as regards the degree of phonetic similarity between the signs, it must be pointed out this has less significance on account of the manner in which the goods in question are marketed (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraphs 35 to 37). As OHIM rightly states, it was not claimed or shown that the goods at issue were sold primarily in response to an oral order. Thus, these goods are not always subject to a prescription and under normal circumstances they can be bought off the shelves of a pharmacy or of any store selling them. The consumer concerned will therefore inspect the marks visually during the act of purchase. Therefore, the applicant’s argument that any conceptual difference between the signs would be totally imperceptible to the relevant public when the names were spoken is not relevant in this case.
60 The Board of Appeal therefore rightly held that the relevant professional and non‑professional public, which is highly attentive, was not likely to believe that the goods in question came from the same undertaking or from economically‑linked undertakings, given the absence of conceptual similarity, and certain visual differences, between the two signs.
61 Consequently, there is no likelihood of confusion between the marks in question and the applicant’s sole plea must therefore be rejected.
62 The action must therefore be dismissed in its entirety.
Costs
63 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 form of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Fourth Chamber)
hereby:
1. Dismisses the action.
2. Orders Laboratorios Del Dr. Esteve, SA to pay the costs.
Delivered in open court in Luxembourg on 8 July 2009.
[Signatures]