JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
7 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark BIOPLAN – Earlier national word mark BIOPLAK – Relative ground for refusal – No similarity between the goods – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑543/22,
Laboratorios Ern, SA, established in Barcelona (Spain), represented by S. Correa Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
BRM Extremities Srl, established in Milan (Italy),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov (Rapporteur), President, G. De Baere and K. Kecsmár, 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 Ern, SA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 June 2022 (Case R 2147/2021-5) (‘the contested decision’).
Background to the dispute
2 On 16 July 2019, BRM Extremities filed an application for registration of an EU trade mark with EUIPO in respect of the word sign BIOPLAN.
3 The mark in respect of which registration was sought covered goods in Class 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 to the following description: ‘Orthopaedic implants; orthopedic articles; orthopaedic braces; orthopaedic devices; prosthetic devices; implant materials [prosthesis] for use in surgery; orthopaedic hip prostheses; orthopaedic screws, in particular, screws for flat feet’.
4 On 18 December 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the earlier Spanish word mark BIOPLAK, covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations’.
6 The ground relied on in support of the opposition was that set out in 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).
7 Following a request from BRM Extremities, EUIPO invited the applicant to adduce proof of genuine use of the earlier mark relied on in support of the opposition. The applicant complied with that request within the prescribed period.
8 On 11 November 2021, the Opposition Division rejected the opposition on the ground that the goods covered by the marks at issue were dissimilar.
9 On 17 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, after finding that use of the earlier mark had been shown only in respect of ‘Pharmaceutical products, namely platelet antiaggregant’ in Class 5, the Board of Appeal dismissed the appeal on the ground that the goods at issue were not similar and that, therefore, there was no likelihood of confusion.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– refuse the application for registration of the mark applied for in respect of all the goods concerned;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event of the parties being summoned to attend an oral hearing.
Law
The applicant’s second head of claim
13 As regards the second head of claim, the Court notes that, by that head of claim, the applicant asks the Court to refuse to register the mark applied for in respect of all the goods at issue and may be understood as asking the Court to alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001 by adopting the decision that the Board of Appeal should have taken, in accordance with the provisions of that regulation. However, the Board of Appeal can be called upon to rule only on certain of the conditions for registration of an EU trade mark, that is to say, either on the compliance of applications for registration with the provisions of that regulation, or on the outcome of any opposition to such applications (see, to that effect, judgment of 1 September 2021, FF IP v EUIPO – Seven (the DoubleF), T‑23/20, not published, EU:T:2021:523, paragraph 24 and the case-law cited).
14 Accordingly, the Board of Appeal does not have the power to hear and determine an application in which the applicant asks it to refuse to register an EU trade mark. In those circumstances, nor does the Court have jurisdiction to hear and determine an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see judgment of 1 September 2021, the DoubleF, T‑23/20, not published, EU:T:2021:523, paragraph 25 and the case-law cited). It follows that the second head of claim must be rejected because the Court does not have jurisdiction.
The single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
15 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
16 The applicant disputes, in particular, the Board of Appeal’s finding that the goods covered by the marks at issue are dissimilar. According to the applicant, there is a ‘close connection’ between the goods at issue. Those goods are aimed at the same consumers, namely medical practitioners and the general public, share the same distribution channels and commercialisation points, namely pharmacies and hospitals, and have the same purpose, which is to improve a person’s state of health or to cure a disease. Furthermore, they could be complementary. It adds, referring to the newsletters of the Instituto para el Uso Seguro de los Medicamentos (ISMP, Institute for Safe Medication Practices, Spain), that it is necessary to be particularly strict when comparing pharmaceutical products, since confusion on the part of the relevant public in that field could have an adverse effect on the health of consumers. Lastly, the applicant claims that an undertaking active on the market in the provision of the goods at issue might use sub-brands, and it is therefore conceivable that consumers may regard the goods designated by the marks at issue as being ‘two [different] types of goods’, which nevertheless originate from the same undertaking or a linked undertaking.
17 EUIPO disputes the applicant’s arguments.
18 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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.
19 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings, constitutes a likelihood of confusion. According to the same line of 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 2017/1001, a likelihood of confusion presupposes both that the two marks 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 In the present case, the applicant does not dispute the Board of Appeal’s finding that use of the earlier mark has been shown in respect of only some of the goods for which it had been registered, that is to say ‘pharmaceutical products, namely platelet antiaggregant’ in Class 5.
22 Therefore, for the purposes of assessing the similarity of the goods, it is necessary to compare, on the one hand, the ‘pharmaceutical products, namely platelet antiaggregant’ in Class 5 covered by the earlier mark and, on the other hand, the ‘orthopaedic implants; orthopedic articles; orthopaedic braces; orthopaedic devices; prosthetic devices; implant materials [prosthesis] for use in surgery; orthopaedic hip prostheses; orthopaedic screws, in particular, screws for flat feet’ in Class 10 covered by the mark applied for.
23 In that regard, in paragraphs 50 to 55 of the contested decision, the Board of Appeal observed that the goods at issue were different in nature, that they did not coincide as regards their method of use or their distribution channels and that they were generally produced by different manufacturers. The Board of Appeal found that the goods covered by the mark applied for had a specific purpose, namely to prevent musculo-skeletal problems or contribute to healing after surgery, whereas the goods covered by the earlier mark had a completely different purpose, namely to prevent thrombosis. The applicant has not shown that the latter were used to treat musculo-skeletal problems. Lastly, the Board of Appeal stated that the goods at issue were not complementary. In the light of all those considerations, it concluded that those goods were dissimilar.
24 According to settled case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
25 In the present case, first, the Court notes, as the Board of Appeal did without being challenged in that regard by the applicant, that the goods at issue are different in nature. The goods covered by the earlier mark are pharmaceutical products – specifically, platelet antiaggregants – which are substances or compositions which are administered to the body and dissolve there in order to treat or prevent problems related to the circulation of the blood. The goods covered by the mark applied for are various orthopaedic articles and devices, which are either implanted in the body during surgery or used externally to support part of the body.
26 Second, as regards their purpose and intended use, it is true that it is common ground that the goods at issue have the same general intended use, namely to improve and protect one’s health.
27 However, for the purposes of the comparison of therapeutic products, it is their therapeutic indication and not their general intended use which is of decisive importance. The specific nature of medicines has already been taken into account in the case-law which states that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose of the relevant goods or services is vital in directing their choices. The purpose and intended use of a therapeutic product are expressed in its therapeutic indication (see, to that effect, judgment of 15 December 2010, Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraphs 36 and 37 and the case-law cited).
28 In the present case, the therapeutic indication of the goods at issue is different. While the indication of the goods covered by the earlier mark is the treatment and prevention of problems relating to the circulation of the blood, the indication of the goods covered by the mark applied for is the treatment of orthopaedic problems.
29 Consequently, the Court finds, as the Board of Appeal did, that the goods at issue have different purposes and different specific intended uses.
30 Third, as the Board of Appeal essentially pointed out, the goods at issue also differ in their method of use. As EUIPO submits, the goods covered by the earlier mark are pharmaceutical products, which are intended to be administered orally or intravenously, whereas the goods covered by the mark applied for are intended to support a part of the body or to be implanted into the body.
31 Fourth, the applicant does not dispute that those goods are usually manufactured by different undertakings.
32 Fifth, it is common ground between the parties that the goods at issue are not in competition with each other.
33 Sixth, the applicant has also failed to show that the goods at issue are complementary. According to settled case-law, goods are complementary where they are closely connected in the sense that one is essential or significant for using the other so that consumers may think that the same company is responsible for manufacturing them (see judgment of 11 May 2011, Flaco-Geräte v OHIM – Delgado Sánchez (FLACO), T‑74/10, not published, EU:T:2011:207, paragraph 40 and the case-law cited).
34 In the present case, although the applicant claims that the goods at issue ‘could be complementary’ and that there is a ‘close connection’ between them, it does not substantiate that assertion. It does not state how the goods covered by the earlier mark are essential or significant for using those covered by the mark applied for, or vice versa.
35 Seventh, it is true that the goods at issue share the same distribution channels, in particular pharmacies, and are aimed at the same relevant public, consisting of the general public and health professionals.
36 However, that fact alone cannot be the basis for the goods at issue being similar. It is settled case-law that the fact that the goods may be sold in the same commercial establishments is not necessarily particularly significant, since different kinds of goods may be found in such establishments, without consumers automatically believing that they have the same origin (see, by analogy, judgment of 24 March 2010, 2nine v OHIM – Pacific Sunwear of California (nollie), T‑363/08, not published, EU:T:2010:114, paragraph 40 and the case-law cited). In that regard, the Court has held previously that the mere fact that those two kinds of goods may be sold in pharmacies is not sufficient to establish similarity between them (see, to that effect, judgment of 13 December 2017, Laboratorios Ern v EUIPO – Ascendo Medienagentur (SLIMDYNAMICS), T‑700/16, not published, EU:T:2017:896, paragraphs 35 and 36).
37 Moreover, the fact that goods may be aimed at the same public is not in itself sufficient for it to be held that there is a similarity between the goods at issue, since goods and services that are aimed at the same consumers are not necessarily all identical or similar (judgment of 4 December 2019, Billa v EUIPO – Boardriders IP Holdings (Billa), T‑524/18, not published, EU:T:2019:838, paragraph 52).
38 For all of those reasons, the Board of Appeal did not make an error of assessment in finding that the goods at issue were dissimilar.
39 That conclusion is not called into question by the applicant’s reference to the judgment of 10 November 2021, Stada Arzneimittel v EUIPO – Pfizer (RUXXIMLA) (T‑239/20, not published, EU:T:2021:771). The applicant merely cites certain paragraphs of that judgment without drawing any conclusions from them for the present case or specifying the relevance of those paragraphs to the outcome of the present dispute. Accordingly, that argument must be rejected in so far as it is neither substantiated nor expounded. In any event, the Court notes that, in the case that gave rise to that judgment, the Opposition Division had found, inter alia, that ‘artificial limbs’ and ‘orthopaedic articles’ in Class 10 were dissimilar to ‘pharmaceutical preparations’ in Class 5. That finding had not been contested before the Board of Appeal or the Court.
40 Nor can the applicant’s arguments based on previous decisions of EUIPO succeed. In that regard, suffice it to note that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
41 As regards the applicant’s argument that the assessment of the similarity between therapeutic products must be particularly strict because of the health risks that confusion would entail for the relevant public, as evidenced by the ISMP’s recommendations, the Court notes that it is specifically because of that risk that the level of attention of the relevant public is considered to be high for that category of goods. However, that factor is not relevant when assessing the similarity of the goods, but must be taken into account when carrying out the global assessment of the likelihood of confusion.
42 Lastly, as regards the applicant’s argument that, where an undertaking could use sub-brands, it is conceivable that the relevant public might regard the goods in question as ‘belonging to two types of goods’ but as coming, nonetheless, from the same undertaking or a linked one, it should be borne in mind that it is settled case-law that the mere fact that the goods and services covered by the marks at issue are different makes it possible to rule out any likelihood of confusion (see judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE), T‑2/20, not published, EU:T:2020:493, paragraph 70 and the case-law cited). The question whether the signs at issue could be regarded by the relevant public as sub-brands concerns the global assessment of the likelihood of confusion and has no bearing on the analysis of the similarity of the goods at issue. Therefore, that argument must be rejected as ineffective.
43 In the light of all the findings above, the Board of Appeal did not make an error of assessment in finding that there was no similarity between the goods covered by the marks at issue.
44 Therefore, in the light of the case-law referred to in paragraph 20 above, since one of the conditions necessary for a finding of a likelihood of confusion has not been satisfied, the Board of Appeal was entitled to conclude, without making an error of assessment, that there was no likelihood of confusion.
45 In the light of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the applicant’s arguments relating to the comparison of the signs at issue and whether there is a likelihood of confusion.
Costs
46 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.
47 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that the parties are summoned to attend an oral hearing. In the absence of a hearing, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci | | M. van der Woude |