JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
28 November 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark NRIM Life Sciences — Earlier national word mark RYM — 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) 2017/2001))
In Case T‑909/16,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by S. Correa Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
Anil K. Sharma, residing in Hillingdon (United Kingdom),
ACTION for annulment of the decision of the Fifth Board of Appeal of EUIPO of 26 September 2016 (Case R 2376/2015-5), concerning opposition proceedings between Laboratorios Ern and Mr Sharma,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 December 2016,
having regard to the response lodged at the Court Registry on 16 March 2017,
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
Background to the dispute
1 On 26 June 2014, Mr Anil K. Sharma 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 The mark for which registration was sought is the word sign NRIM Life Sciences.
3 The goods in respect of which registration was sought are in Class 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Medical and veterinary preparations and articles’.
4 The EU trade mark application was published in the European Union Trade Marks Bulletin No 2014/183 of 30 September 2014.
5 On 22 December 2014, the applicant, Laboratorios Ern, SA, gave notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier national word mark RYM, registered in Spain under number 70127 in respect of goods in Class 5 corresponding to the following description: ‘Pharmaceutical and sanitary preparations’.
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 On 28 September 2015, the Opposition Division rejected the opposition in its entirety.
9 On 27 November 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 26 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal and ordered the applicant to pay the costs.
11 First, it held that the relevant public was Spanish and consisted of the general public and health professionals, who had a high level of attention. In addition, it upheld the Opposition Division’s finding that the goods covered by the mark applied for and those covered by the earlier mark were identical or similar.
12 Next, with regard to the comparison of the signs, it noted that the signs had a low degree of visual and phonetic similarity. Given the lack of meaning in Spanish of the two signs at issue, it held that they were conceptually neutral.
13 Finally, the Board of Appeal found, in essence, that, in the light of the normal level of distinctiveness of the earlier mark, the low similarity of the signs at issue, the above average level of the public’s attention, and despite the identity or similarity of the goods, it was appropriate to find that there was no likelihood of confusion for the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– refuse the mark applied for, for all goods in Class 5;
– order EUIPO and Mr Sharma to pay the costs, in the event that the latter decides to intervene in the present proceedings.
15 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
16 The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
17 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to an earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.
18 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). 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 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 48, and of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 25).
19 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).
20 The question whether the Board of Appeal was correct to hold that there was no likelihood of confusion between the marks at issue must be examined in the light of those considerations.
21 In the present case, the applicant does not dispute the Board of Appeal’s findings in paragraphs 14 to 19 of the contested decision that the relevant territory for analysing the likelihood of confusion is Spain and that the relevant public consists both of the general public and of health professionals, each with a high level of attention. Those findings must be upheld. Goods falling within Class 5 are intended for pharmacists and reasonably well-informed, attentive and circumspect consumers who nonetheless have a high level of attention and are assisted in their choice by highly qualified professionals (see, to that effect, judgment of 14 July 2011, Winzer Pharma v OHIM — Alcon (OFTAL CUSI), T‑160/09, not published, EU:T:2011:379, paragraph 72 and the case-law cited). Moreover, the applicant did not dispute the Board of Appeal’s assessment, in paragraph 21 of the contested decision, that there was an identity or similarity between the goods covered by the marks at issue. The findings on that point must also be upheld.
22 On the other hand, the applicant in essence complains that the Board of Appeal erred in its assessment of the distinctive and dominant features of the marks at issue, as well as of the similarity of the signs and the likelihood of confusion.
The comparison of the signs
The distinctive and dominant elements
23 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that 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).
24 The Court has held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 30). 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).
25 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 42). 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).
26 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and in the alternative, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 57).
27 It should also be recalled that where certain elements are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as being only weakly, or even very weakly, distinctive (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as being distinctive only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctiveness, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. In that regard, it is necessary, in particular, to examine whether other elements of the mark are capable of dominating, by themselves, the image of the mark that the relevant public remembers.
28 For the purposes of assessing 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 for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark was registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 51).
29 In the present case, the word signs RYM and NRIM Life Sciences do conflict.
30 The Board of Appeal found that the signs at issue were only vaguely similar. In essence, it held that it was appropriate to compare the marks at issue, by considering each ‘as a whole’, without excluding that the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components.
31 The applicant disputes the Board of Appeal’s analysis and argues that the signs at issue are highly similar. In essence, it bases its analysis on the similarity between the earlier mark RYM and what it considers to be the dominant element of the sign at issue, namely ‘nrim’. In that regard, it takes the view that the ‘life’ and ‘sciences’ elements in the contested mark are weakly distinctive. According to the applicant, those word elements are secondary, both because they appear to be a mere addition to the element ‘nrim’, which primarily catches the consumer’s attention, and because they are descriptive terms that are frequently used in the pharmaceutical industry, and will thus probably be omitted when the public pronounces the contested mark. Consequently, according to the applicant, the contested mark will be designated by the element ‘nrim’, which is placed first, making it a dominant element. Thus, by basing its comparison on the earlier RYM sign and the sign at issue NRIM, the applicant concluded that the signs at issue were very similar.
32 EUIPO disputes the merits of the applicant’s arguments.
33 It should be noted at the outset that the applicant is wrong to argue, in essence, that the words ‘life’ and ‘sciences’ of the contested mark should have been excluded from the comparison of the signs. In that regard, it must be held that, in the light of the goods concerned, those two words are, at most, only weakly distinctive, since they are highly suggestive of the nature of the goods in question. Both average consumers with a knowledge of English and health professionals will understand the terms ‘life’ and ‘sciences’ as referring to the notion of ‘life sciences’ and as referring to what relates to human health, namely the medical and pharmaceutical fields. In those circumstances, it must be held, as the Board of Appeal did in paragraph 30 of the contested decision, that the words ‘life’ and ‘sciences’ are descriptive of the goods at issue for a large part of the relevant public.
34 However, as noted in paragraph 27 above, although it is true that, as a general rule, the public will not consider a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by that mark, that does not mean that a descriptive element of a mark is necessarily negligible in the overall impression produced by it (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT), T‑449/13, not published, EU:T:2015:839, paragraph 101). It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark.
35 That is not the case here. Although the terms ‘life’ and ‘sciences’ play a secondary role in relation to the word ‘nrim’ placed at the beginning of the contested mark, those terms cannot be regarded as negligible in the overall impression it creates.
36 In the light of all of the foregoing, it must therefore be concluded that the comparison of the signs at issue must be carried out, as the Board of Appeal did, by having regard to the marks at issue taken as a whole.
Visual comparison
37 It should be noted that the earlier mark consists of three letters ‘r’, ‘y’ and ‘m’, whereas the contested mark consists of ‘nrim’, ‘life’ and ‘sciences’. Thus, the signs coincide in the two letters ‘r’ and ‘m’, which may entail a certain similarity. However, it must be held, as the Board of Appeal did in paragraph 27 of the contested decision, that those two letters are the only ones in common in the 16 letters contained in the sign at issue and that they are placed in different positions, namely the first and third letters in the earlier mark and the second and fourth letters in the sign at issue. Moreover, the signs also differ in their initial parts, namely the letter ‘r’ in the earlier sign, and the letter ‘n’ in the sign at issue, as well as by the presence of the two additional words ‘life’ and ‘sciences’ in the sign at issue. It must be borne in mind that, in short words, as in the present case, the mere difference resulting from the use of the capital letter ‘N’ at the beginning of the mark applied for precludes any similarity between the signs at issue (see, to that effect, judgment of 23 May 2007, Henkel v OHIM — SERCA (COR), T‑342/05, not published, EU:T:2007:152, paragraphs 47 and 50).
38 In the light of the foregoing, it must therefore be held that the differences between the marks at issue are such as to render the signs weakly similar visually.
Phonetic comparison
39 It must be held that, taken as a whole, the marks at issue are somewhat similar phonetically. It must be observed that the pronunciation of the signs coincides in the sound of the earlier mark RYM and part of the element ‘nrim’ of the sign at issue. However, as the Board of Appeal noted in paragraph 28 of the contested decision, the complete pronunciation of the two signs differs in the sound of the initial letter ‘n’ and of the two terms ‘life’ and ‘sciences’ in the sign at issue.
40 In the light of the foregoing, it must be held that the Board of Appeal correctly held that the likelihood of phonetic similarity between the marks at issue would be considered weak.
Conceptual comparison
41 It must be held, as the Board of Appeal did in paragraph 29 of the contested decision, that neither the earlier trade mark RYM nor the contested mark NRIM Life Sciences have any meaning in Spanish and that the signs at issue are therefore conceptually neutral. This also applies to the general public who does not understand English and for whom the terms ‘life’ and ‘science’ are meaningless. As for the other part of the relevant public, consisting of health professionals and the general public with a knowledge of English, although it is true that that public is likely to understand the meaning of the terms ‘life’ and ‘sciences’, it will not, in any event, associate any meaning with the earlier mark and, consequently, will consider the signs at issue to be conceptually different.
42 Accordingly, contrary to what the applicant maintains and as the Board of Appeal found in paragraph 32 of the contested decision, it must be held that, viewed as a whole, and in view of the fact that a conceptual comparison of those marks is not relevant to part of the relevant public, the conflicting marks are weakly similar.
The likelihood of confusion
43 The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking account of all factors relevant to the circumstances of the case. That global assessment takes account of the degree of similarity between the marks and between the goods or services covered and implies some interdependence between the factors taken into account, so that 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 (judgment 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).
44 In the present case, the Board of Appeal correctly held that the earlier mark was of average distinctiveness.
45 Moreover, the Board of Appeal correctly noted in paragraph 42 of the contested decision that the notable visual and phonetic differences between the signs, in particular as regards the initial part thereof and their length, combined with the high level of attention shown by the relevant public, leave little or no room for the ‘imperfect recollection’ of the marks at issue.
46 It must thus be held that there is no likelihood of confusion on the ground that the identity of the goods in question is offset by a very low degree of similarity between the signs at issue, all the more so since the degree of attention of the public is high.
47 For the sake of completeness, it should be noted that that conclusion also holds true even if the words ‘life’ and ‘sciences’ of the contested mark should have been excluded from the comparison of the signs, as the applicant claims. As held by the Board of Appeal in paragraph 40 of the contested decision, the degree of similarity between the signs would remain low even if the comparison were to be limited to the ‘rym’ and ‘nrim’ elements.
48 In the light of the foregoing, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
49 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.
50 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fourth Chamber),
hereby:
1. Dismisses the appeal;
2. Orders Laboratorios Ern, SA, to pay the costs.
Kanninen | Schwarcz | Iliopoulos |
Delivered in open court in Luxembourg on 28 November 2017.