JUDGMENT OF THE GENERAL COURT (Third Chamber)
21 December 2022 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark WellBe PHARMACEUTICALS – Earlier national word mark WELL AND WELL – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑644/21,
Pharmadom, established in Boulogne-Billancourt (France), represented by M.-P. Dauquaire, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Wellbe Pharmaceuticals S.A., established in Warsaw (Poland),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and I. Nõmm, Judges,
Registrar: E. Coulon,
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, Pharmadom, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 July 2021 (Case R 1423/2020-5) (‘the contested decision’).
Background to the dispute
2 On 26 September 2017, the other party to the proceedings before the Board of Appeal of EUIPO, Wellbe Pharmaceuticals S.A., filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covers goods and services in, following the restriction made in the course of the proceedings before EUIPO, Classes 3, 5, 10, 35 and 42 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, corresponding, for each of those classes, to the following description:
– Class 3: ‘Toiletries; essential oils and aromatic extracts; cleaning and fragrancing preparations; body cleaning and beauty care preparations; oral hygiene preparations; perfumery and fragrances; deodorants and antiperspirants; make-up preparations; soaps and gels; hair removal and shaving preparations; bath preparations; skin, eye and nail care preparations; hair preparations and treatments; cosmetics for use on the skin; beauty care cosmetics; herbal extracts for cosmetic purposes; feminine hygiene cleansing towelettes; moist wipes for sanitary and cosmetic purposes; tissues impregnated with make-up removing preparations; tissues impregnated with essential oils, for cosmetic use; disposable wipes impregnated with cleansing compounds for use on the face; colour cosmetics for the skin; cosmetics in the form of creams; cosmetic creams and lotions; body mist; beauty milk; pre-moistened cosmetic wipes; non-medicated body care preparations; non-medicated beauty preparations; non-medicated douches; face oils; beauty lotions; fluid creams (cosmetics); skin care preparations; hair preparations and treatments; phytocosmetic preparations; douching preparations for personal sanitary or deodorant purposes (toiletries); cosmetic preparations for bath and shower; cosmetic breast firming preparations; cosmetic hair regrowth inhibiting preparations; washing preparations for personal use; shower preparations; hand washes; serums for cosmetic purposes; hand cleansers; shower and bath gel; hair balm; hair dye; cosmetic hair dressing preparations; cosmetics for the use on the hair; hair care creams; hair nourishers; hair strengthening treatment lotions; hair lotion; permanent waving and curling preparations; hair dyeing preparations; hair treatment preparations; neutralising hair preparations; preparations for protecting the hair from the sun; hair care preparations, not for medical purposes; hair straightening preparations; preparations for setting hair; cosmetic preparations for the hair and scalp; hair glaze; hair fixers; hair preservation treatments for cosmetic use; shampoo; hair gel; hair tonic; animal grooming preparations; tailors’ and cobblers’ wax; grinding preparations; leather and shoe cleaning and polishing preparations; laundry preparations; vehicle cleaning preparations; household fragrances; wipes incorporating cleaning preparations; detergents; stain removing preparations; furbishing preparations; destainers; oils for cleaning purposes; laundry additives; fabric conditioning preparations; perfumed creams; scented body spray; perfumed toilet waters; fragrances; scented body lotions and creams; perfume water; toilet water; fragrances for personal use; body sprays [non-medicated]; perfumery; fragrance preparations; non-medicated dentifrices; breath fresheners; toothpaste; mouthwash; teeth cleaning lotions; cosmetic preparations for the care of mouth and teeth; tooth polish; dental care preparations for animals; dentifrices in the form of chewing gum; dentifrices and mouthwashes; dentifrices; depilatory preparations; cosmetics; bath preparations; mouthwashes; dentifrices; tanning preparations; cosmetic preparations for slimming purposes; beauty masks; perfume; essential oils; tissues impregnated with cosmetic lotions; cosmetic utensils; sanitary articles, namely cleaning preparations; cleaning preparations; wiping preparations’;
– Class 5: ‘Pharmaceuticals; medicinal preparations and substances; dietary supplements and dietetic preparations; dental preparations and articles; hygienic preparations and articles; pest control preparations and articles; dental preparations and articles, and medicated dentifrices; pharmaceuticals and natural remedies; medical dressings, coverings and applicators; vitamins and vitamin preparations; mineral water salts; salts for mineral water baths; health food supplements made principally of minerals; mineral food supplements; mineral waters for medical purposes; foods supplements; dietary food; dietetic substances adapted for medical use; dietary supplements for animals; infant formula; medicated and sanitising soaps and detergents; deodorisers and air purifiers; disinfectants and antiseptics; absorbent articles for personal hygiene; dietetic foods adapted for medical use; dietetic infusions for medical use; dietetic beverages adapted for medical purposes; dietetic food preparations adapted for medical use; food supplements for non-medical purposes; mineral nutritional supplements; mineral food supplements; beverages adapted for medicinal purposes; vitamin drinks; nutritional supplements; bread products for diabetics; dietetic preparations adapted for medical use; multi-vitamin preparations; neutraceutical preparations for humans; vitamin preparations; preparations for use as additives to food for human consumption (medicated); vitamin preparations in the nature of food supplements; appetite stimulant preparations; appetite suppressants; probiotic supplements; baby food; antioxidants; dietary and nutritional supplements; health food supplements for persons with special dietary requirements; cod liver oil; food for medically restricted diets; medicinal herbs; medicinal herbs in dried or preserved form; herbal mud packs for therapeutic use; decoctions of medicinal herb; decoctions for pharmaceutical purposes; chemicals for pharmaceutical use; extracts of medicinal herbs; extracts of medicinal plants; pharmaceuticals, herbal preparations, probiotics and supplements having an action similar to medicines for medical and medicinal purposes; herbal formulations; medicinal infusions; medicinal teas; biocidal preparations and substances for medical purposes; biological preparations for medical purposes; biological preparations for veterinary purposes; biological reagents for medical and veterinary purposes; biological indicators for monitoring sterilisation processes for medical or veterinary purposes; biological tissue cultures for medical and veterinary purposes; vaccines; serums; blood-derived preparations and substances for medical and medicinal purposes; biotechnological preparations and substances for medical and medicinal purposes; sanitary preparations for medical purposes; chemical preparations for sanitary purposes; diagnostic preparations; reagents; sanitary preparations for medical purposes; disinfectants; veterinary preparations; preparations for destroying vermin; fungicides; herbicides; first-aid boxes, filled; plasters, materials for dressings; materials for dressing wounds; adhesive plasters; medicated plasters; anti-inflammatory analgesic plasters; corn plasters; bandages for dressings; sanitary wear; compresses’;
– Class 10: ‘Medical and veterinary apparatus and instruments; feeding aids and pacifiers; orthopedic and mobility aids; medical furniture and bedding, equipment for moving patients; medical clothing; prosthetics and artificial implants; physical therapy equipment; sex aids; hearing protection devices; dental equipment; diagnostic, examination, and monitoring equipment; surgical and wound treating equipment; applicators for medications; masks and equipment for artificial respiration; feeding bottles for babies; breast milk storage bottles; teething soothers; medical, surgical and dental apparatus and instruments; apparatus for use in medical analysis; orthopaedic bandages; compression bandages; supportive anatomical bandages; plaster bandages for orthopedic purposes; bandages, elastic; therapeutic support bandages; non-elastic bandages (supportive); sphygmomanometers; pulse meters’;
– Class 35: ‘Advertising, marketing and promotional services; business analysis, research and information services; promoting and advertising of goods, in particular pharmaceutical preparations; marketing services; sales promotion; import-export agencies; business and industrial management and administration; opinion polling; business inquiries; business management and organisation consultancy; organisation of exhibitions for commercial or advertising purposes; business surveys; computerised file management and computer database management; distribution of advertising, marketing and promotional material; public relations services; loyalty, incentive and bonus program services; administration of incentive award programs to promote the sale of the goods and services of others; product demonstrations and product display services; business consultancy and advisory services; administrative data processing; clerical services; human resources management and recruitment services; statistical analysis and reporting; automated data processing; consultancy relating to data processing; electronic data processing; collection of data; compilation and systemisation of information used in electronic transmissions; collection and systematisation of information into computer databases; compilation of statistical data for use in scientific research; compilation of statistical data relating to medical research; data compilation for others; compilation and systemisation of information into computer databases; computerised file management; compilation of directories for publishing on global computer networks or the internet; data retrieval services; data processing services in the field of healthcare; collating of data in computer databases; management and compilation of computerised databases; consultancy relating to the keeping of registration documents for pharmaceuticals and similar preparations; creation of registration documents for pharmaceuticals and similar preparations; auctioneering services; sales administration; providing consumer information relating to goods and services; foreign trade information and consultation; information about sales methods; retailing or wholesaling of pharmaceuticals and veterinary and sanitary preparations; retail services in relation to clothing accessories; retailing relating to domestic electronic medical apparatus; retail services relating to food; retailing of sanitary fixtures for toilets and bathrooms; online retail store services relating to cosmetic and beauty products; retail services in relation to medical apparatus; retail services in relation to veterinary apparatus; retail services in relation to physical therapy equipment; retail services in relation to medical instruments; retail services in relation to dietary supplements; retail services in relation to toiletries; retail services in relation to dietetic preparations; retail services in relation to veterinary preparations; retail services in relation to animal grooming preparations; retail services in relation to educational supplies; retail services in relation to hygienic implements for humans; online retail services relating to cosmetics’;
– Class 42: ‘Research and development of new products; research and development in the field of medical science, chemistry, biotechnology, biology and pharmacy; conducting clinical trials of new drugs and pharmaceuticals; pre-clinical and clinical trials of drugs; chemical, biological and biotechnological analysis and research, scientific and technological services and research and design relating thereto; science and technology services; design services; IT services; research in the field of medicine and pharmacology; engineering services; natural science services; laboratory analysis in the field of bacteriology; laboratory analysis in the field of chemistry; laboratory analysis in the field of cosmetics; chemical technological research; expert opinion relating to technology; consultancy in the field of scientific research; technical consultancy in relation to research services relating to foods and dietary supplements; research to develop new products; blood analysis services for scientific research purposes; research on the subject of pharmaceuticals; research and development of vaccines and medicines; research and development for the pharmaceutical industry; scientific research and development; bacteriological research and testing; clinical research; scientific investigations for medical purposes; scientific research in the field of pharmacy; research in the field of pharmacogenetics; consultancy in the field of pharmaceutical research; consultancy in the field of bacteriological research; consultancy relating to pharmaceutical research and development; consultancy relating to research and development in the field of therapeutics; consultancy relating to research in the field of pharmacogenetics; medical laboratory services; inspection of pharmaceuticals; biomedical research services; dental research laboratory services; laboratory research services relating to dermatology; provision of information and data relating to medical and veterinary research and development; providing information on clinical studies via an interactive website; providing scientific information in the field of medical disorders and their treatment; testing of pharmaceuticals; pharmaceutical products development; development of pharmaceutical preparations and medicines; pharmaceutical product evaluation; medical research’.
4 On 26 December 2018, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on the earlier French word mark WELL AND WELL, which was registered under the number 3929829 and covers, inter alia, goods and services in Classes 3, 5, 10, 35 and 44 corresponding, for each of those classes, to the following description:
– Class 3: ‘Cleaning, desinfecting, softening, scouring preparations; soaps; perfumes and perfumery; essentials oils; cosmetics; cosmetics preparations; preparations for body care including cleansing milks, creams, gels, pomades, talcum powders and oils; preparation for slimming purposes; make-up removing preparations; hair lotions and creams; shampoos; hair dyes; dentifrices; dental preparations; depilatory preparations; shaving preparations; nail care preparations including nail lacquers and varnishes’;
– Class 5: ‘Pharmaceuticals; pharmaceutical preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; appetite suppressants for medical purposes; food for babies; dietary supplements; disinfectants; cotton for medical purposes; materials for dressings; plasters; medicines for human purposes; preparations for pharmaceutical purposes; lotions for pharmaceutical purposes; pharmaceuticals for body care; vaccines; preparations for destroying vermin; fungicides; herbicides; napkins; babies’ napkins; babies’ napkin-pants’;
– Class 10: ‘Surgical, medical, dental apparatus and instruments; orthopedic apparatus and articles; feeding bottles; arterial blood pressure measuring apparatus’;
– Class 35: ‘Business management assistance; business management and organisation consultancy; business information and inquiries; business research; cost price analysis; procurement services for others; administrative processing of purchase orders; commercial management assistance; communication (presentation of goods and services on communication media); price comparison services; commercial information and advice for consumers; business management consultancy; professional business consultancy; mail advertising; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services; direct mail advertising, leaflets, prospectuses, printed matter, samples; distribution of samples; business appraisals; business management including purchasing, sales, order and stock management; organisation of exhibitions, manifestations and demonstrations for professional, commercial, information or advertising purposes; economic forecasting; systemisation and compilation of information into computer databases; computerised file management; data in computer files; import-export agency services; commercial information agency services; commercial administration of the licensing of the goods and services of others; rental of advertising time on communication media; rental of advertising space; market studies; market research; sponsorship search; sponsorship; sponsorship (advertising); news clipping services; sales promotion for others; advertising; online advertising on a computer network; advertisement; dissemination of advertising matter; publication of publicity texts; public relations; outsourcing services (business assistance); marketing; referencing of goods and services; demonstration of goods; production of advertising films; advertising film management; rental of advertising materials including data processing equipment; drawing up of statements of accounts; data search in computer files for others’;
– Class 44: ‘Health care; medical assistance; advi[c]e and information relating to parapharmaceuticals; pharmaceutical assistance; pharmacy services; pharmacy advice; pharmaceutical services; pharmacists’ services; telepharmacy services; parapharmaceutical services; parapharmaceutical consultancy; beauty services namely assistance and advice for purchasing’.
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now 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 On 11 May 2020, the Opposition Division partially upheld the opposition, in respect of the following goods and services:
– Class 3: all the goods in that class, except ‘tailors’ and cobblers’ wax’;
– Class 5: all the goods in that class;
– Class 10: all the goods in that class, except ‘hearing protection devices’;
– Class 35: all the services in that class, except ‘retail services in relation to clothing accessories; retailing of sanitary fixtures for toilets and bathrooms; retail services in relation to educational supplies; auctioneering services’;
– Class 42: all the services in that class, except ‘IT services; engineering services’.
8 On 12 July 2020, the other party to the proceedings before the Board of Appeal of EUIPO filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal upheld the appeal on the ground that there was no likelihood of confusion, even if all the goods and services at issue were identical. In order to reach that conclusion, it found that the earlier mark had, as a whole, only an average degree of inherent distinctiveness, that there was only a below-average degree of visual and phonetic similarity between the signs at issue and that the signs at issue were not conceptually comparable except for the part of the relevant public for which they were similar.
Forms of order sought
10 The applicant claims that the Court should annul the contested decision.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 Given the date on which the application for registration at issue was filed, namely 26 September 2017, which is decisive for the purposes of identifying the applicable substantive law, 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). Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward and by EUIPO in its written pleadings must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.
13 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant submits, in essence, that, contrary to what the Board of Appeal found, the word element ‘well’ has an average degree of distinctiveness, even though that word element is capable of being understood by part of the relevant public. It argues that knowledge of a foreign language cannot be presumed, unless the word is very basic and commonly used by the relevant public. Accordingly, the applicant claims that that word is meaningless for a substantial part of the relevant public and therefore has an average degree of distinctiveness. It submits that the repetition of the word ‘well’ in the earlier mark increases its distinctiveness.
14 As regards the mark applied for, the applicant also argues that the Board of Appeal erred in finding that the relevant public perceived it as a whole. It submits that the Board of Appeal should have found that the relevant public would split the mark applied for into ‘well’ and ‘be’, as the word element ‘well’ is distinctive. Consequently, it claims that there are similarities between that mark and the earlier mark, which also contains the word ‘well’.
15 The applicant submits that, in the light of the word element ‘well’ in the marks at issue, there is a visual, phonetic and conceptual similarity between those marks. It argues that the relevant public may, moreover, regard the mark applied for as a sub-brand which has been filed in respect of a special range of goods. It contends that it follows that the Board of Appeal should have found that there was a likelihood of confusion in the present case. The applicant also submits that the addition of the descriptive word element ‘pharmaceuticals’ only increases the association between the signs at issue, which cover pharmaceutical goods and services.
16 EUIPO disputes the applicant’s arguments.
17 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.
18 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). If there is no likelihood of confusion, Article 8(1)(b) of Regulation No 207/2009 is not applicable (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 17).
19 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. 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).
20 It must be pointed out at the outset that the Board of Appeal, in paragraph 24 of the contested decision, found, for reasons of procedural economy, that it was not necessary to compare the goods and services at issue, but that it was possible to base its reasoning on the premiss that those goods and services were identical. The present plea therefore entails ascertaining whether the Board of Appeal could, without making any error of assessment, rule out the possibility of a likelihood of confusion even if the goods and services at issue were identical.
21 Furthermore, as regards the relevant public, it is necessary to confirm its definition, stemming from paragraphs 17, 21 and 22 of the contested decision, that that public, in essence, consists both of the general public and of health professionals in France, whose level of attention varies from average to high depending on the goods and services in question. That point is not, moreover, disputed by the parties.
The comparison of the signs
The distinctiveness and dominance of the elements comprising the signs at issue
22 The Board of Appeal pointed out, in paragraph 31 of the contested decision, that the earlier mark, which consisted of the expression ‘well and well’ was a purely verbal sign which did not contain any element that could be considered to be more dominant visually than another.
23 It also found, in paragraphs 33 to 36 of the contested decision, that the word element ‘well’ had a low degree of distinctiveness for the part of the relevant public which would understand it as ‘good’ or as a reference to the concept of ‘well-being’. It took the view that that word was descriptive with regard to the goods and services at issue. The Board of Appeal found that, for the relevant public which did not understand English, that word element had an average degree of distinctiveness. It took the view that the earlier mark, taken as a whole, had an average degree of distinctiveness for the whole of the relevant public.
24 Furthermore, the Board of Appeal found, in paragraphs 37 to 40 of the contested decision, that the word element ‘wellbe’ did not have any meaning, but that it was likely that part of the relevant public would perceive it as referring to the concept of ‘well-being’. It took the view that, in the light of its position and stylisation, that word element was also dominant in the mark applied for. It found that the figurative elements and the word element ‘pharmaceuticals’ were subordinate in relation to the word element ‘wellbe’. It took the view that the word element ‘pharmaceuticals’ had, moreover, a low degree of distinctiveness and that the figurative elements were merely decorative. The Board of Appeal also found that the word ‘be’, which was a basic English word, would be understood by the relevant public as something that exists. It found that that word, which did not refer to the goods and services at issue, had an average degree of distinctiveness.
25 The applicant claims that the word element ‘well’ has an average degree of distinctiveness, since it does not directly describe or allude to any of the characteristics of the goods and services concerned. In addition, it submits that the Board of Appeal should have found that that word was meaningless for a substantial part of the French public and that it had an average degree of distinctiveness, with the result that it should have found it appropriate to focus its examination only on that part of the public.
26 The applicant also contends that the Board of Appeal could not conclude that the word element ‘well’ in the earlier mark had a low degree of distinctiveness for part of the French public, which understood the meaning of that word as referring to ‘well-being’, and, at the same time, that the word element ‘be’, as part of the word ‘wellbe’ in the mark applied for, was a basic English word which had an average degree of distinctiveness, since it did not directly describe or allude to any of the characteristics of the goods and services concerned.
27 It must be borne in mind at the outset that, according to settled case-law, where the signs consist both of word and figurative elements, in principle, the word element of the sign usually has a stronger impact on the consumer than the figurative element, since the public does not tend to analyse the signs and will more readily refer to the goods or services in question by citing the name than by describing the figurative element of the trade mark (see judgment of 29 April 2020, Abarca v EUIPO – Abanca Corporación Bancaria (ABARCA SEGUROS), T‑106/19, not published, EU:T:2020:158, paragraph 51 and the case-law cited).
28 Furthermore, although, according to the case-law which has been cited in paragraph 19 above, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he or she will break it down into elements which, for him or her, suggest a specific meaning or which resemble words known to him or her (see judgment of 21 December 2021, Dr. Spiller v EUIPO – Rausch (Alpenrausch Dr. Spiller), T‑6/20, not published, EU:T:2021:920, paragraph 98 and the case-law cited).
29 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 or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 21 December 2021, Alpenrausch Dr. Spiller, T‑6/20, not published, EU:T:2021:920, paragraph 99 and the case-law cited).
30 It must, in that regard, be pointed out that the Court has already held that a relevant public consisting of health professionals is able to understand the meaning of the word ‘well’ since those professionals have, in general, a good knowledge of English and can, in any event, easily understand the meaning of certain words which are very common in everyday language (see, to that effect, judgment of 11 April 2019, Pharmadom v EUIPO – Objectif Pharma (WS wellpharma shop), T‑403/18, not published, EU:T:2019:248, paragraph 36).
31 Likewise, the Court has held that consumers who are part of the general public and have a basic linguistic knowledge of English would understand the word ‘well’ as referring to the concept of ‘well-being’ in relation to goods concerning a person’s physical well-being (see, to that effect, judgment of 11 April 2019, WS wellpharma shop, T‑403/18, not published, EU:T:2019:248, paragraph 37 and the case-law cited).
32 In the light of the case-law cited in paragraphs 28 to 31 above, the Board of Appeal was right in finding that, in the circumstances of the present case, for the part of the relevant public which would understand the meaning of the word element ‘well’, that element would have a low degree of distinctiveness, whereas, for the public which did not understand English, it would have an average degree of distinctiveness. The Board of Appeal’s findings must therefore be upheld, since the word element ‘well’ will be understood by at least part of the relevant public as an English word meaning ‘good’ and as referring to the concept of ‘well-being’. Accordingly, the word element ‘well’, as regards the part of the public which understands its meaning in English, has a low degree of distinctiveness with regard to the goods and services which are connected with a person’s physical well-being.
33 Furthermore, it must be stated that the Board of Appeal was right in pointing out, in paragraph 46 of the contested decision, that the word element ‘be’ referred to a vague and unspecific concept. Consequently, in the light of the case-law cited in paragraph 29 above, that element is not therefore descriptive and devoid of distinctive character. That word therefore also does not have a low degree of distinctiveness, as the applicant submits. On the contrary, since, for the part of the public which understands its meaning in English, it refers to the concept of being and does not refer to the goods and services at issue, it has an average degree of distinctiveness.
34 As regards the mark applied for as a whole, it is necessary to reject the argument that the Board of Appeal did not take into account its components and in particular the word elements ‘well’ and ‘be’ because ‘be’ is written with an upper-case letter ‘B’. The mere fact that the Board of Appeal stated, in paragraph 44 of the contested decision, that the mark applied for, considered as a whole, did not have any specific meaning for the relevant public or that it was likely that part of the relevant public was capable of understanding the word element ‘wellbe’ as a reference to the concept of ‘well-being’ does not mean that it refused to consider the possibility that that public, or at least a part of it, might break down that mark into word elements which, for it, suggested a specific meaning or which resembled words known to it, in accordance with the case-law cited in paragraph 28 above. Accordingly, in the contested decision, the Board of Appeal, after referring to the case-law principles which have been cited in paragraph 28 above, did not fail to consider the possibility that part of the relevant public might recognise the mark applied for as the combination of the words ‘well’ and ‘be’ or, at the very least, break down that mark into those two elements on the basis of its understanding of one or the other of them.
35 The Board of Appeal’s findings that the word element ‘pharmaceuticals’ and the figurative elements of the mark applied for occupy a merely subordinate position in relation to the dominant element ‘wellbe’ must also be upheld. The word element ‘pharmaceuticals’ occupies a secondary position within the mark applied for on account of its small size and position. Likewise, the whole of the relevant public will understand it since it is very close to the French word ‘pharmaceutique’, the meaning of which is closely linked to some of the goods and services covered by the mark applied for. Accordingly, as the Board of Appeal found, in the light of the goods and services at issue, that element is of lower distinctive character in relation to the goods and services which relate to pharmaceuticals. Furthermore, the figurative elements are, as the Board of Appeal correctly found, merely decorative and do not make it possible to identify the commercial origin of the goods and services at issue.
36 The Board of Appeal did not therefore make any error of assessment in breaking down and analysing the elements which were possibly the most distinctive elements within the signs at issue. Consequently, the arguments which the applicant has put forward against those assessments must be rejected as unfounded.
The visual comparison
37 The Board of Appeal found, in paragraphs 41 and 42 of the contested decision, that, notwithstanding the presence in common, in the signs at issue, of the sequence of letters comprising the word element ‘well’, those signs were, ultimately, visually similar to a ‘below average’ degree. The Board of Appeal pointed out, to that effect, that, although the signs at issue coincided in the same sequence of letters, they differed in the repetition of the element in common ‘well’ and the presence of the connector ‘and’ in the earlier mark and in the presence of the word ‘be’ and the figurative elements in the mark applied for, which had no counterparts in the opposing mark.
38 The Board of Appeal also took account of the fact that the word element ‘wellbe’ was the visually dominant element in the mark applied for on account of its position and stylisation and of the fact that it was not included in the earlier mark. In addition, it took account of the fact that consumers generally tend to focus on the first element of a sign when they are faced with a trade mark. Consequently, it concluded with regard to those points that the signs differed in the repetition of the element in common ‘well’ and the presence of the connector ‘and’ in the earlier mark and in the word elements ‘be’ and ‘pharmaceuticals’ in the mark applied for, even though the latter element would hardly be perceived. Furthermore, it found that the signs also differed in the figurative elements of the mark applied for, namely the stylisation of the sign and the green and blue colours of the figurative element, which had no counterparts in the earlier mark.
39 Lastly, the Board of Appeal found, in paragraph 42 of the contested decision, that the signs differed in their structures, since the earlier mark was composed of relatively short elements, whereas the mark applied for contained one long visually dominant word, an additional word element below that and a figurative element. It concluded that the degree of visual similarity between the marks at issue was ‘below average’.
40 That assessment is irreproachable. Although the applicant contends that the signs at issue are visually similar on account of the word element ‘well’, the fact remains that there are significant visual differences between those signs, differences which were referred to by the Board of Appeal in paragraphs 41 and 42 of the contested decision and which have been pointed out in paragraphs 37 to 39 above. Notwithstanding its length, the mark applied for can easily be read and will be perceived as a whole, even though the word element ‘pharmaceuticals’ occupies a secondary position within that mark. That applies both to the part of the relevant public which will understand the basic English word ‘well’ or the word ‘be’ and to the part of the relevant public which will not understand either of those words. Contrary to what the applicant claims, the fact that the word ‘be’ is written with an upper-case letter ‘B’ merely indicates that the word element ‘wellbe’ consists of two different words, but is not in itself sufficient to affect the relevant public’s perception of that element as a whole.
41 It follows that the Board of Appeal was right in finding that, in spite of the word element ‘well’, which the two marks have in common, the overall visual impression which they created displayed a number of differences as set out above; consequently, the signs at issue are visually similar only to a low degree.
The phonetic comparison
42 The Board of Appeal found, in paragraph 43 of the contested decision, that, phonetically, the pronunciation of the signs at issue coincided in the pronunciation of the letters ‘w’, ‘e’, ‘l’ and ‘l’, in accordance with the usual rules of French pronunciation. However, it stated that the marks at issue were distinguished from each other by additional elements, namely that the earlier mark would be pronounced ‘well and well’, whereas the mark applied for would be pronounced ‘well be phar ma ceu ti cals’. It found that, consequently, the two marks coincided only in their beginnings. The Board of Appeal also took the view that, because of its small size and its secondary position, the word element ‘pharmaceuticals’ would not be pronounced by at least part of the relevant public. Moreover, it found that the marks at issue had a different number of syllables, that they differed in their rhythm and intonation and that they coincided solely in an element that was distinctive to a low degree for at least part of the relevant public. In the light of those findings, it concluded that the marks at issue were phonetically similar only to a ‘below average’ degree.
43 It must be held, as the Board of Appeal found, that, on account of the different number of syllables and the different intonation and rhythm when the word elements ‘well and well’ and ‘wellbe’ are pronounced, the degree of phonetic similarity between the marks at issue is low. It must, moreover, be stated that the applicant has not put forward any argument to dispute the phonetic comparison which the Board of Appeal carried out.
The conceptual comparison
44 The Board of Appeal found, in paragraphs 44 to 46 of the contested decision, that, for the part of the public which did not understand the word element ‘well’, since one of the signs was not associated with any meaning, those signs were not conceptually similar. However, since, according to the Board of Appeal, at least a non-negligible part of the relevant public had to be regarded as understanding the meaning of the word element ‘well’, for that part of the relevant public, the signs had some degree of conceptual similarity to the extent that they had that element in common, even if it was weakly distinctive. For the Board of Appeal, the signs were also conceptually similar for the part of the public which perceived the concept of ‘well-being’ in each of them. However, the Board of Appeal found that the signs exhibited a conceptual difference for the part of the public which understood the word element ‘be’, even though that was a vague and unspecific concept.
45 The applicant submits that, since the signs at issue have the word element ‘well’ in common and that word is capable of referring to the concept of well-being, the Board of Appeal should have found that the signs at issue were conceptually similar.
46 In that regard, it must be pointed out that the Board of Appeal itself pointed out in paragraph 46 of the contested decision that ‘the signs w[ould] also be conceptually similar for the part of the public that w[ould] perceive the concept [of] “well-being” in [those] signs’, while correctly stating that the word element ‘well’ was a weakly distinctive element. Furthermore, it did not make any error of assessment in finding, in essence, that no comparison was possible with regard to the part of the relevant public which would not understand the meaning of that term.
The degree of inherent distinctiveness of the earlier mark
47 The Board of Appeal found, in paragraphs 34 and 36 of the contested decision, in essence, that the earlier mark had an average degree of inherent distinctiveness because it did not have any meaning for the whole of the relevant public.
48 However, contrary to what the Board of Appeal found, it must be held that the word element ‘well’ has a low degree of distinctiveness for the part of the relevant public which understands English, as has been held in paragraph 32 above, and that the word element ‘and’ is a basic English word which that part of the relevant public will understand as a word that simply links the repeated elements ‘well’, which means that for that part of the relevant public the earlier mark has a low degree of distinctiveness. The meaning of the word ‘well’ will not be affected by the addition of the word ‘and’ and by the fact that it is repeated. The applicant therefore errs in submitting that the repetition of the word ‘well’ in the earlier mark increases its distinctiveness. It will be necessary to take the Board of Appeal’s error into account when carrying out the global assessment of the likelihood of confusion.
49 The Board of Appeal’s finding that the earlier mark has no meaning for the relevant public which does not understand English and that it has an average degree of distinctiveness for that part of the relevant public must, however, be upheld.
The global assessment of the likelihood of confusion
50 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).
51 The Board of Appeal found, in paragraphs 47 to 58 of the contested decision, that, even though the signs at issue had a string of letters in common, those letters were not sufficient to justify the finding of a likelihood of confusion, even for the public which displayed an average level of attention in relation to some of the goods at issue. The Board of Appeal drew those conclusions by taking into account the low degree of visual and phonetic similarity and the fact that the signs at issue also did not share any conceptual similarity, except for part of the relevant public, namely the part which would grasp the meaning of the word element ‘well’ in both signs. Consequently, it ruled out any likelihood of confusion with regard to all the goods and services covered by the marks at issue which had been found to be identical and with regard to the whole of the relevant public, including the relevant public which did not understand the meaning of the word element ‘well’.
52 The applicant submits that the Board of Appeal should have considered it appropriate to focus its examination only on the part of the relevant public for which the word element ‘well’ is meaningless and has an average degree of distinctiveness. It contends that the French public, for which the word ‘well’ has no meaning, is very likely to remember the word element ‘well’ as an indication of origin and may make a connection between the signs at issue, which include the same first word element, ‘well’.
53 EUIPO disputes the applicant’s arguments.
54 It must be stated that the Board of Appeal’s findings as regards the likelihood of confusion do not contain any error of assessment.
55 First, it must be borne in mind that the signs at issue coincide only in the word element ‘well’ and differ in the elements which have been added to the mark applied for and in the additional words ‘and’ and ‘well’ in the earlier mark. Those elements actually create a distinct visual impact, despite the fact that they are not particularly distinctive. Consequently, the Board of Appeal was right in finding that the earlier mark drew its distinctive character principally from the specific combination of the word elements, namely the repetition of the word ‘well’ with the central element ‘and’, which does not appear in the mark applied for.
56 Secondly, it must be borne in mind that the relevant public consists of the general public and of consumers who are professionals, who display a level of attention which is average in relation to everyday goods (Class 3), high with regard to goods which have a medical purpose or can have an impact on health and the human body (Classes 5 and 10) and higher than average as regards the services covered by Classes 35 and 42.
57 It follows that, for the same reasons as those of the Board of Appeal, which have been set out in paragraph 51 above, the applicant’s arguments must be rejected. The relevant public, which displays a level of attention varying from average to high with regard to the goods and services at issue, is not likely to associate the mark applied for with the earlier mark with the result that the former would be perceived as a sub-brand of the latter, which has been filed in respect of a particular range of goods.
58 In the light of the low degree of distinctiveness of the term ‘well’ and the low degree of inherent distinctiveness of the earlier mark, which have been explained in paragraphs 46 and 48 above respectively, that finding also applies to the part of the relevant public which understands English and for which there is likely to be a conceptual similarity between the signs. In that regard, it must be borne in mind that a similarity which relates to elements which have a weak distinctive character can play only a limited role when assessing the likelihood of confusion (see judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 67 and the case-law cited).
59 In spite of the Board of Appeal’s premiss that the goods and services at issue are identical and notwithstanding the principles of interdependence and of imperfect recollection, there is no likelihood of confusion in the circumstances of the present case.
60 In the light of the foregoing, it must be held that the Board of Appeal did not make any error of assessment in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
61 In view of the foregoing, the applicant’s single plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
62 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.
63 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders Pharmadom to pay the costs.
Schalin | Škvařilová-Pelzl | Nõmm |
Delivered in open court in Luxembourg on 21 December 2022.
E. Coulon | | M. van der Woude |