JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
20 January 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark OptiMar – Earlier national word mark Mar – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑261/19,
Stada Arzneimittel AG, established in Bad Vilbel (Germany), represented by J.‑C. Plate and R. Kaase, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Optima Naturals Srl, established in Gallarate (Italy), represented by S. Brustia and E. Montelione, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 31 January 2019 (Case R 1348/2018-1), relating to opposition proceedings between Stada Arzneimittel and Optima Naturals,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann (Rapporteur), President, U. Öberg and O. Spineanu-Matei, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 18 April 2019,
having regard to the response of EUIPO lodged at the Court Registry on 30 August 2019,
having regard to the response of the intervener lodged at the Court Registry on 16 September 2019,
having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Fifth Chamber,
having regard, in the context of the current health crisis due to the COVID-19 pandemic, to the postponement of the hearing scheduled for 10 June 2020,
having regard to the designation of another judge to complete the Chamber as one of its Members was prevented from attending,
further to the hearing on 22 September 2020, in the course of which documents were submitted by the applicant,
gives the following
Judgment
Background to the dispute
1 On 2 March 2016, the intervener, Optima Naturals Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 3, 5 and 10 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, for each of those classes, to the following description:
– Class 3: ‘Cleaning agents for household purposes; body sprays; soap; antiperspirants [toiletries]; dentifrice’;
– Class 5: ‘Pharmaceuticals; collyrium; hygienic lubricants; ophthalmologic preparations; medicinal sprays; antibacterial sprays; anti-inflammatory sprays; medicated dental rinses’;
– Class 10: ‘Medical apparatus and instruments; ear picks’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2016/48 of 10 March 2016.
5 On 10 June 2016, the applicant, Stada Arzneimittel AG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights:
– the German word mark Mar, which was registered on 29 October 1958 under the number 719 079 and covers goods in Class 5 corresponding to the following description: ‘Medicines’;
– the German word mark MAR, which was registered on 20 December 2004 under the number 30 438 052 and covers goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides’;
– the international registration Mar of 30 January 1964, bearing the number 279 105 and designating Bulgaria, Austria and Finland, which covers goods in Class 5 corresponding to the following description: ‘Medicines’;
– the international registration MAR of 7 July 2006, bearing the number 894 152 and designating the Czech Republic, which covers goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 At the intervener’s request, the applicant provided proof of use of its earlier marks.
9 On 16 May 2018, the Opposition Division found that the applicant had provided proof of genuine use of its earlier marks in connection with ‘medicated nasal sprays’ in Class 5 only in Germany. It took the view that there was a likelihood of confusion as regards the ‘pharmaceuticals; medicinal sprays; antibacterial sprays; anti-inflammatory sprays; collyrium; ophthalmologic preparations; medicated dental rinses’ in Class 5 and the ‘medical apparatus and instruments’ in Class 10 covered by the mark applied for. It therefore partially upheld the applicant’s opposition based on the German trade mark MAR, registered under the number 30 438 052, as regards medicated nasal sprays.
10 On 12 July 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11 By decision of 31 January 2019 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. First of all, it took the view that the Opposition Division’s finding that genuine use of the German trade mark registered under the number 30 438 052 had been proved only in connection with medicated nasal sprays had not been disputed and that therefore the Opposition Division’s decision had become final in that respect. Next, it found that, since the earlier mark was a German trade mark, the goods at issue were aimed at the German public, which, in view of those goods, displayed a high level of attention, whether that public was the general public or a more specialist public. In the context of the comparison of the goods concerned, it found that the medicated nasal sprays were similar or identical to the goods covered by the mark applied for, except for the ‘cleaning agents for household purposes, body sprays; soap, antiperspirants [toiletries]; dentifrice’ in Class 3, ‘medicated dental rinses’ and ‘hygienic lubricants’ in Class 5 and ‘ear picks’ in Class 10, which were found to be dissimilar. Furthermore, the Board of Appeal found that the marks at issue were visually and phonetically similar to a low degree and conceptually similar. It added that the distinctiveness of the earlier mark had to be considered to be weak. It concluded from this that the visual dissimilarities between the signs and the high level of attention of the relevant public could outweigh the conceptual similarity related to the element ‘mar’ and that there was therefore no likelihood of confusion on the part of the German public. Lastly, since proof of genuine use had been furnished only in respect of Germany, the Board of Appeal stated that the international registrations could be disregarded, as could the German trade mark registered under the number 719 079, which was identical to the earlier mark that had been examined and covered a narrower list of goods.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred before the Court and those incurred in the course of the opposition proceedings and before the Board of Appeal.
Law
15 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that there is a likelihood of confusion on the part of the relevant public so far as concerns the German trade mark registered under the number 30 438 052, which was examined, and the mark applied for.
16 Given the date on which the application for registration at issue was filed, namely 2 March 2016, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
17 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must 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. Furthermore, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
19 According to settled case-law, 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. 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 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).
20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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).
21 As regards the relevant public, the Board of Appeal found, in paragraphs 20 to 24 of the contested decision, that the goods at issue were aimed at the German public, which displayed a high level of attention, whether that public was the general public or a more specialist public. The parties do not dispute that assessment on the part of the Board of Appeal.
The comparison of the goods at issue
22 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, 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 judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
23 In the present case, the Board of Appeal found, like the Opposition Division, that genuine use of the earlier mark under examination had been proved only in connection with medicated nasal sprays.
24 Furthermore, as a result of the comparison between those medicated nasal sprays and the goods covered by the mark applied for, the Board of Appeal found, like the Opposition Division, that they were dissimilar to the ‘cleaning agents for household purposes, body sprays; soap, antiperspirants [toiletries]; dentifrice’ in Class 3, the ‘hygienic lubricants’ in Class 5 and the ‘ear picks’ in Class 10. It also found that they were similar or identical to the ‘pharmaceuticals; medicinal sprays; antibacterial sprays; anti-inflammatory sprays; collyrium; ophthalmologic preparations’ in Class 5 and the ‘medical apparatus and instruments’ in Class 10 covered by the mark applied for. By contrast, unlike the Opposition Division, which had found that ‘medicated dental rinses’ were similar to a low degree to medicated nasal sprays, the Board of Appeal took the view that those goods were dissimilar, on the grounds that, even though they shared the same distribution channels and the same public, they had totally different purposes and did not come from the same producers.
25 The Board of Appeal’s findings that the medicated nasal sprays covered by the earlier mark must be considered to be similar or identical to the pharmaceuticals, medicinal sprays, antibacterial sprays, anti-inflammatory sprays, collyrium and ophthalmologic preparations in Class 5 and the medical apparatus and instruments in Class 10 covered by the mark applied for and dissimilar to the other goods covered by the mark applied for are not disputed.
26 By contrast, the applicant disputes the Board of Appeal’s assessment in so far as it found that the medicated nasal sprays covered by the earlier mark were dissimilar to the medicated dental rinses covered by the mark applied for. It submits in that regard that there is a connection between the nose, the mouth area and the pharynx, that infections of the respiratory tract and the pharynx can be treated by means of nasal sprays and that there are therefore similarities between those goods.
27 EUIPO contends that the applicant’s claim, which is being made for the first time before the Court, that dental rinses can be used to treat the throat and be administered by means of a nasal spray, has not been proved and that those goods are aimed only at treating the mouth.
28 It must be pointed out that, even though the goods at issue are aimed at treating, in the case of medicated nasal sprays, nasal infections and, in the case of medicated dental rinses, mouth infections, the purposes of those goods are not fundamentally different, because they are medicinal products which are aimed at treating infections, in particular those of the respiratory system. Furthermore, as the applicant points out, it is conceivable that nasal sprays may be used to treat infections of the respiratory tract and the pharynx. It is also conceivable that those goods may be combined. Furthermore, the Board of Appeal itself found that they shared the same distribution channels. Lastly, EUIPO’s argument that the applicant did not put that line of argument forward during the administrative proceedings can be explained in the present case by the fact that the Opposition Division had found that the goods in question were similar, albeit to a low degree, and it must therefore be rejected.
29 It follows that, as the applicant submits and contrary to what the Board of Appeal found, medicated nasal sprays and medicated dental rinses must be held to be similar to a low degree.
The comparison of the signs
30 First of all, it must be pointed out that 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. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
31 Next, it must be noted that assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
32 Lastly, it must be observed that the greater or lesser degree of distinctiveness of elements that are common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs (see judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB), T‑581/13, not published, EU:T:2015:192, paragraph 41 and the case-law cited). The descriptive, non-distinctive or weakly distinctive elements of a composite trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by that mark (see, to that effect, judgment of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53 and the case-law cited).
33 That said, it is necessary to distinguish between, first, the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark and must be taken into account in the context of the global assessment of the likelihood of confusion, and, secondly, the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark and must be examined at the stage of assessing the similarity of the signs in order to determine any dominant element of the sign (see, to that effect, order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43, and judgment of 25 March 2010, Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, EU:T:2010:123, paragraph 65).
The distinctiveness of the element ‘mar’
34 It must be borne in mind that, according to the case-law, for the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser capacity of that mark or 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, account should be taken, in particular, of the inherent characteristics of the mark or element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 14 September 2017, Aldi Einkauf v EUIPO – Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 48 and the case-law cited).
35 In the present case, the Board of Appeal found that the majority of the German public would connect the element ‘mar’, in the specific context of nasal sprays, with a particular meaning, that of the sea, and that the earlier mark therefore possessed a low degree of distinctiveness for medicated nasal sprays.
36 In the first place, as regards the earlier mark, the applicant disputes the Board of Appeal’s assessment and submits that the element ‘mar’ which constitutes the earlier mark has an average degree of inherent distinctiveness. It takes the view that it cannot be assumed that the relevant German public will associate the word ‘mar’ with the sea or sea water. It submits that the Board of Appeal erred in basing the German public’s understanding of the word ‘mar’ on its meaning in Spanish, Italian and Portuguese or on words which have Latin roots.
37 EUIPO and the intervener dispute those arguments.
38 First, it must be stated that, as pointed out by EUIPO and the intervener, the German public will understand that the term ‘mar’ refers to the sea, the German equivalent of which may be ‘Meer’. Secondly, as stated in the contested decision, the Latin roots of the word ‘mar’ are to be found in the commonly used German terms ‘maritim’, ‘marine’ or ‘marina’, which the applicant, moreover, admitted at the hearing. The Board of Appeal was therefore right in finding that the term ‘mar’ would be understood by the relevant German public as referring to the sea.
39 The other arguments which the applicant puts forward do not cast doubt on that finding.
40 First, the fact that the Board of Appeal referred, in paragraph 35 of the contested decision, to the meaning of the word ‘mar’ in Spanish, Italian and Portuguese does not alter that finding. Although it is true that knowledge of a foreign language cannot, in general, be assumed (see judgments of 13 September 2010, Inditex v OHIM – Marín Díaz de Cerio (OFTEN), T‑292/08, EU:T:2010:399, paragraph 83, and of 6 December 2016, Tuum v EUIPO – Thun (TUUM), T‑635/15, not published, EU:T:2016:708, paragraph 56 and the case-law cited), that reference to other languages is in addition to the other elements which the Board of Appeal took into account, and, in particular, to the fact that certain German terms contain the same root and to the proximity between the word ‘mar’ and its German equivalent ‘Meer’.
41 Secondly, it is also necessary to reject the applicant’s argument disputing the Board of Appeal’s assertion that it is well known that nasal sprays are mainly manufactured from salt water or sea water.
42 In that regard, it must be borne in mind that well-known facts are defined as facts which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29), or which arise from practical experience generally acquired from the marketing of general consumer goods, which facts are likely to be known by anyone and are, in particular, known by consumers of those goods. In such a case, the Board of Appeal is not, moreover, required to give examples of that practical experience (see judgments of 16 October 2014, Novartis v OHIM – Tenimenti Angelini (LINEX), T‑444/12, not published, EU:T:2014:886, paragraph 30, and of 8 October 2015, Benediktinerabtei St. Bonifaz v OHIM – Andechser Molkerei Scheitz (Genuß für Leib & Seele KLOSTER Andechs SEIT 1455), T‑78/14, not published, EU:T:2015:768, paragraph 26).
43 If the bodies of EUIPO decide to take well-known facts into account, an applicant is entitled to produce documents before the Court as evidence of the accuracy – or inaccuracy – of a matter of common knowledge (see judgments of 15 January 2013, Gigabyte Technology v OHIM – Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 22, and of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 30 and the case-law cited). The question of whether such documents can be taken into consideration as evidence is distinct from the question of whether the matter concerned was of common knowledge (judgment of 15 January 2013, Gigabyte, T‑451/11, not published, EU:T:2013:13, paragraph 22).
44 In the present case, it is true, and is not, moreover, disputed by the applicant, that nasal sprays for the treatment and decongestion of the nasal mucous membranes can be manufactured mainly from salt water or sea water, even though there are also nasal sprays which do not contain salt water or sea water. Such a fact is likely to be known by anyone or may be learnt from generally accessible sources, in particular with regard to a public which displays a high level of attention in respect of the goods at issue. It is true that the Board of Appeal did not refer to the evidence on which it relied in order to assert that that fact was well known. However, not only has it not been proved that that assertion is incorrect, but it constitutes one element among others which make it possible to determine that the term ‘mar’ is weakly distinctive with regard to medicated nasal sprays.
45 It follows that, contrary to what the applicant claims, the various particulars referred to by the Board of Appeal establish that there is a sufficiently direct link between the word ‘mar’ and medicated nasal sprays.
46 Consequently, the Board of Appeal was right in finding that the element ‘mar’ had a low degree of distinctiveness with regard to medicated nasal sprays, the only goods covered by the earlier mark which are at issue in the present case.
47 In the second place, as regards the mark applied for, the applicant submits that the Board of Appeal did not examine the distinctiveness of the element ‘mar’ in relation to the goods covered by that mark other than medicated nasal sprays, although that element on its own has the capacity to identify those goods as coming from a particular undertaking.
48 EUIPO and the intervener express no view in that regard.
49 It must be pointed out that, as stated by the Board of Appeal, the mark applied for consists of the word element ‘optimar’, which is, moreover, in blue and in which the letters ‘o’ and ‘m’ are written in upper-case, of a small-sized letter ‘r’ surrounded by a circle, which indicates that the sign is a registered trade mark, and of other figurative elements, which consist of a lighter blue circular device, the left-hand side of which is split into two by an inner line which follows the contours of the circle, but is less curved.
50 It must be held, as the Board of Appeal found, that the registered trade mark symbol ® is negligible in the overall impression created by the mark applied for. By contrast, that is not the case with regard to the figurative elements of the mark applied for, which, although they are relatively simple, are not negligible. As regards the word element ‘optimar’ in the mark applied for, even though, as the applicant submits, the element ‘mar’ can be regarded as having an average and not a low degree of distinctiveness with regard to the goods which do not have any connection with sea water, the fact remains that it is not, in itself, dominant in the mark applied for. It is in the light of those considerations that the earlier mark must be compared to the mark applied for taken as a whole.
The visual comparison
51 The Board of Appeal found that the marks at issue were visually similar to a low degree, because they coincided only in the weakly distinctive element ‘mar’, whereas they differed in the initial element ‘opti’ and in the figurative element consisting of a light-blue circular device, the left-hand side of which is split into two by an inner line which follows the contours of the circle, but is less curved.
52 The applicant submits that the degree of similarity is at least average, on the ground that the element ‘mar’, in contrast to the simple graphics of the mark applied for and to the abbreviation ‘opti’, has the necessary ability to identify the goods referred to in the application for registration as coming from a particular undertaking.
53 EUIPO and the intervener dispute those arguments.
54 In that regard, it must be stated that the earlier word mark consists solely of the element ‘mar’, whereas the mark applied for is a composite mark which contains non-negligible figurative elements, namely a stylised, coloured font and a very large circular element placed in the centre of that mark, as well as the word element ‘opti’, which is not present in the earlier mark, is placed at the beginning of the mark applied for and makes the word element in that mark longer than that in the earlier mark.
55 Furthermore, as has been stated in paragraphs 34 to 50 above, the element ‘mar’, which is common to the marks at issue, is not particularly distinctive or dominant in the mark applied for and has a low degree of distinctiveness in the earlier mark. Even though its distinctive character may be categorised as average in the mark applied for with regard to the goods which do not have any connection with sea water, the fact remains that the applicant’s argument that the element ‘mar’ has the necessary ability to identify the goods covered by the mark applied for as coming from a particular undertaking is not in any way substantiated and must be rejected.
56 Consequently, contrary to what the applicant submits, the Board of Appeal was right in categorising the degree of visual similarity between the marks at issue as low.
The phonetic comparison
57 The Board of Appeal found that there was a low degree of phonetic similarity between the marks at issue, because they differed in the pronunciation of the syllables ‘op’ and ‘ti’, which constitute more than half of the mark applied for.
58 The applicant disputes that assessment and submits that the target public will divide the mark applied for into two elements, namely ‘opti’ and ‘mar’, the element ‘opti’ being descriptive or, at least, laudatory. It claims that the degree of phonetic similarity between the marks at issue should therefore be categorised as average or above average.
59 EUIPO and the intervener dispute those arguments.
60 In the present case, as EUIPO points out, the element ‘opti’ will be pronounced. Furthermore, since it is placed at the beginning of the sign applied for, it constitutes a significant phonetic difference in relation to the earlier mark. The fact that the public will split the mark applied for into two does not alter that finding. Likewise, the applicant’s argument regarding the alleged descriptiveness of the element ‘opti’, an argument which is not substantiated, must be rejected, because that element will in any event, in spite of its alleged descriptiveness, be pronounced. Lastly, it is true that the element ‘mar’ gives rise to a certain phonetic similarity between the marks at issue, which must, however, be categorised as low or, at most, average in degree.
61 The signs at issue must therefore be held to be phonetically similar to a low or, at most, average degree.
The conceptual comparison
62 In the contested decision, the Board of Appeal found that, even though the term ‘opti’ could refer to the concept of ‘optimal’, meaning ‘the best’, or to the German word ‘optisch’, alluding to the purpose of the goods as eye drops, the marks at issue had to be categorised, in the light of the specific meaning of the element ‘mar’, which referred to the main constituent of the goods at issue, as conceptually similar.
63 The applicant submits that the conceptual comparison is neutral, since the element ‘mar’ has no meaning in Germany.
64 EUIPO and the intervener express no view in that regard.
65 In that connection, it must be stated that, as pointed out in the contested decision, the element ‘opti’ is capable of referring to the words ‘optisch’ or ‘optimal’, that is to say, to a concept which is either laudatory or refers to the eye, but in any event to a concept which is not present in the earlier mark. As for the element ‘mar’, which is present in both of the marks at issue, that element refers to the same concept relating to the sea, since the relevant public understands it. To that extent, there is a conceptual similarity between the signs at issue which must, having regard to the element ‘mar’, which is common to both of the signs at issue, be categorised as being average in degree.
66 In view of all of the foregoing, it must be held that, in the light of the presence of the identical element ‘mar’, which is not highly distinctive, there is a certain similarity between the marks at issue, which must, however, be categorised as being low or, at most, average in degree overall.
The likelihood of confusion
67 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 covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high 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).
68 In the present case, after pointing out that the distinctiveness of the earlier mark had to be considered to be weak, the Board of Appeal found that the high level of attention of the relevant public and the visual dissimilarities between the signs outweighed the conceptual similarity related to ‘the weak element’ ‘mar’. It concluded that there was no likelihood of confusion on the part of the relevant public.
69 The applicant submits that the earlier mark has an average degree of distinctive character, that the Board of Appeal erroneously determined the factors to be taken into consideration in the context of the global assessment and that there is a likelihood of confusion.
70 EUIPO and the intervener dispute those arguments.
71 It must be pointed out that the medicated nasal sprays covered by the earlier mark are identical or similar to the goods at issue covered by the mark applied for, that the signs at issue are visually similar to a low degree and phonetically and conceptually similar to a low or, at most, average degree (see paragraphs 56, 61 and 66 above), that the relevant public’s level of attention is high, whether that public is the general public or a more specialist public, and that the earlier mark is weakly distinctive. Accordingly, it must be held that there is, in the present case, no likelihood of confusion on the part of the relevant public. In that regard, the fact that the Board of Appeal erred in the contested decision in finding that medicated nasal sprays were dissimilar to medicated dental rinses, whereas they must be held to be similar to a low degree (see paragraph 29 above), does not alter that conclusion.
72 Notwithstanding the fact that the goods covered by the marks at issue are identical or similar, the low degree of visual similarity and low or, at most, average degree of phonetic and conceptual similarity between those marks, in conjunction with the high level of attention of the relevant public and the weak distinctiveness of the earlier mark, rule out the possibility that the relevant public might think that the goods at issue come from the same undertaking or from economically linked undertakings when they are sold under the marks at issue.
73 Consequently, it must be held that, following a global assessment, the Board of Appeal was right in finding that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, on the part of the relevant public.
74 In view of all of those considerations, the single plea put forward by the applicant must be rejected and the action must therefore be dismissed in its entirety.
Costs
75 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.
76 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
77 Furthermore, the intervener has claimed that the applicant should be ordered to pay the costs incurred for the purposes of the proceedings before EUIPO. In that regard, it is sufficient to state that, in any event, since the present judgment is dismissing the action brought against the contested decision, it is point 2 of the operative part of that decision which continues to determine the costs incurred in the opposition proceedings and in the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Stada Arzneimittel AG to pay the costs.
Spielmann | Öberg | Spineanu-Matei |
Delivered in open court in Luxembourg on 20 January 2021.