JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 September 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark Sorvir – Earlier Community word mark NORVIR – Relative ground for refusal – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑149/08,
Abbott Laboratories, established in Abbott Park, Illinois (United States), represented by S. Schäffler, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
aRigen, Inc., established in Tokyo (Japan),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 6 February 2008 (Case R 809/2007‑2) relating to opposition proceedings between Abbott Laboratories and aRigen, Inc.,
THE GENERAL COURT (Sixth Chamber),
composed of A.W.H. Meij (Rapporteur), President, V. Vadapalas and L. Truchot, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court on 18 April 2008,
having regard to the response lodged at the Registry of the Court on 20 August 2008,
further to the hearing on 28 October 2009,
gives the following
Judgment
Background to the dispute
1 On 26 May 2005 aRigen, Inc. filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the word sign Sorvir.
3 The goods for which registration was sought fall within Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘anti-viral pharmaceuticals’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 50/2005 of 12 December 2005.
5 On 19 December 2005 the applicant, Abbott Laboratories, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark NORVIR, designating ‘a pharmaceutical preparation, namely an anti-infective’ in Class 5, and was directed against all the goods to which the application for registration related. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
7 On 26 April 2007 the Opposition Division rejected the opposition in its entirety. In essence, it considered that because of the lack of visual, phonetic and conceptual similarity between the earlier sign NORVIR and the sign Sorvir for which registration was sought, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
8 On 23 May 2007 the applicant filed an appeal with OHIM against the decision of the Opposition Division, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
9 By decision of 6 February 2008 (‘the contested decision’) the Second Board of Appeal of OHIM dismissed that appeal and upheld the decision of the Opposition Division. The Board of Appeal found, essentially, that the signs at issue were not sufficiently similar to give rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
Procedure and forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 Since Judge Tchipev was prevented from sitting after the closure of the oral procedure, the case was re-assigned to President of Chamber Meij as Judge-Rapporteur and Judge Vadapalas was designated, pursuant to Article 32(3) of the Court’s Rules of Procedure, to complete the Chamber.
13 By order of 5 July 2010, the Court (Sixth Chamber), in its new composition, re‑opened the oral procedure and the parties were informed that they would be heard at a fresh hearing on 1 September 2010.
14 By letters of 9 and 15 July 2010 respectively, OHIM and the applicant informed the Court that they did not wish to be heard again. Since the other party to the proceedings before the Board of Appeal of OHIM had not intervened before the Court, that party was not called to a fresh hearing.
15 Consequently, the President of the Sixth Chamber decided to close the oral procedure.
Law
16 In support of its action, the applicant relies on a single plea in law alleging the infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
17 The applicant considers, in essence, that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 between the earlier sign NORVIR and the mark Sorvir for which registration is sought, because of their similarities.
18 First, the applicant claims that there are obvious visual and phonetic similarities between the signs at issue, since five of the six letters of which they consist are identical.
19 Second, the applicant claims that those signs are conceptually similar because of the shared element ‘vir’ and its importance in the overall impression given, notwithstanding the fact that that element is allusive in relation to the goods concerned.
20 Third, the applicant argues that the normal distinctiveness of the earlier sign and the phonetic, visual, and conceptual similarities of the signs at issue are likely to give rise to a likelihood of confusion on the part of the relevant consumers.
21 OHIM does not accept the applicant’s arguments and relies in particular on the reasons stated by the Board of Appeal in the contested decision.
22 First, OHIM contends that the difference between the first letters of the signs at issue justifies the finding that they are not visually or phonetically similar. In essence, OHIM considers that the common element ‘vir’, since it alludes to the kind of goods at issue and therefore has only a low degree of distinctiveness, cannot counterbalance the lack of visual and aural similarities stemming from the syllables ‘nor’ and ‘sor’.
23 Second, OHIM submits that, notwithstanding the shared element ‘vir’, the signs at issue are conceptually distinct, since that element is understood by the relevant public as referring to the therapeutic indication of the goods concerned, intended for the treatment of viral infections, and not to their commercial origin.
24 Third, OHIM considers that, taking into account the fact that the beginning of a sign is generally the part to which the consumer accords the most importance, the difference in the first letters of the signs at issue outweighs the common element ‘orvir’, and consequently there is no likelihood of confusion on the part of the relevant public.
Findings of the Court
25 Under Article 8(1)(b) of Regulation No 40/94, 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 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.
26 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. Whether there is a likelihood of confusion on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment of 2 July 2009 in Case T‑311/08 Fitoussi v OHIM – Loriot (IBIZA REPUBLIC), not published in the ECR, paragraph 22). That presupposes that, cumulatively, the degree of similarity of the trade marks in question and that of the goods or services designated by those marks are sufficiently high (Case T‑311/01 Éditions Albert René v OHIM – Trucco (Starix) [2003] ECR II‑4625, paragraph 59).
27 In the present case, the applicant does not challenge the analysis of the Board of Appeal, set out in paragraphs 14 and 15 of the contested decision, that the relevant public is composed not only of professionals, that is doctors and pharmacists, but also of end-users, who are deemed to be reasonably well‑informed and reasonably observant and circumspect. Nor does the applicant challenge the analysis set out in paragraph 19 of the contested decision that the goods at issue are identical, namely ‘a pharmaceutical preparation, namely an anti-infective’ covered by the earlier sign, and ‘anti-viral pharmaceuticals’, designated by the sign for which registration is sought. The only point of contention is whether the Board of Appeal was correct to hold that the signs at issue were sufficiently dissimilar to preclude any likelihood of confusion on the part of the relevant public.
28 In that regard, it should be borne in mind that, in relation to the visual, aural or conceptual similarity of the signs at issue, the global assessment of the likelihood of confusion must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
29 It has further been 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 of the visual, phonetic and conceptual aspects (Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38).
30 In the present case, the Court finds, first of all, that the signs NORVIR and Sorvir both contain six letters corresponding to the joining of two elements, namely, ‘nor’ and ‘vir’, in the earlier sign, and ‘sor’ and ‘vir’, in the sign for which registration is sought. The signs at issue therefore share the same number of syllables and their last five letters are identical. In addition, the signs share the same vowels, ‘o’ and ‘i’, which occupy the same positions in the signs.
31 As regards, first, the visual and phonetic comparison, the Board of Appeal stated, in paragraph 26 of the contested decision, that the difference in the initial letter of the two signs, namely, the letter ‘n’ in the earlier sign and the letter ‘s’ in the sign for which registration is sought, had such an impact on the overall impression that it outweighed the common element ‘orvir’.
32 The fact remains, however, as claimed by the applicant, that while the difference in the first letter of the signs at issue brings visual and phonetic differences, the visualisation and pronunciation of the group of five letters which follow it, ‘orvir’, are still identical and contribute therefore, of necessity. to the recognition of a degree of similarity.
33 In those circumstances, although it is true, as the Board of Appeal observed in particular in paragraph 24 of the contested decision, that the beginning of a sign is of particular importance in the overall impression given by the sign, the existence of a degree of similarity cannot, in the present case, be denied, having regard, first, to the visual impression given by the element ‘orvir’, which, consisting of five letters common to the signs at issue, is in each case the major part and, second, to the pronunciation of that element, which is identical in the signs at issue.
34 In addition, it should be observed that, in the present case, neither of the signs at issue contains any additional word element, capable of constituting a distinguishing feature sufficient to preclude any visual or aural similarity between the signs at issue being perceived by the relevant public (see, to that effect, Case T‑211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II‑1297, paragraphs 39 to 42).
35 Consequently, the Board of Appeal made an error of assessment in not acknowledging the existence of a degree of visual similarity and phonetic similarity between the signs at issue.
36 OHIM contends that the assessment of the visual and phonetic similarities between the signs at issue should primarily be based on the initial elements ‘nor’ and ‘sor’, whose differing first letters outweigh the similarities stemming from the fact that the following two letters are identical. OHIM bases this argument on the fact that the ending ‘vir’ is descriptive of the goods concerned, so that, when those similarities are being assessed, it should be regarded as less relevant.
37 In that regard, it should be noted that, even if it were accepted that, by definition, the element ‘vir’ is descriptive, that factor could have an effect only in the assessment of conceptual similarity. The descriptiveness of an element of a word sign depends, of necessity, on the capacity of the relevant public to understand the meaning of that element. By contrast, the descriptiveness of a word element can have no relevance to the assessment of visual and phonetic similarities, where the only factors which must be taken into consideration are those capable of having a specific effect on visual and aural impressions. As regards visual impression, such factors include, for example, the size of the element concerned or its position in the sign.
38 As regards, secondly, conceptual comparison, it must be observed that the Board of Appeal held, in essence, in paragraph 27 of the contested decision, that the signs at issue, as a whole did not have any meaning.
39 The applicant claims however that the presence of the shared suffix ‘vir’ gives rise to a conceptual similarity. In that regard, it should be observed that the fact that that element was an allusion to the antiviral properties of the designated goods would, by definition, be capable of having an effect on the degree of conceptual similarity. That said, the assessment of the similarity between the signs at issue must be based on the overall impression given by them, since the average consumer generally perceives a mark as a whole and does not undertake an examination of its various details. In the present case, in the absence of specific information from the applicant, it must be held that the signs at issue will each be perceived as a whole by the relevant public, which will therefore not specifically identify the supposed allusion to the antiviral properties of the element ‘vir’. In those circumstances, it is sufficient to find, following the Board of Appeal, that both the sign NORVIR and the sign Sorvir are devoid of any particular meaning and that, for that reason, the relevant public will perceive the signs at issue as made‑up words with no reference to a particular concept.
40 In addition, even were it accepted that the relevant public could connect the element ‘vir’ in the signs at issue to the concept of a virus, as, essentially, is claimed by the applicant, that element would be perceived as descriptive of the antiviral pharmaceuticals to which the signs at issue relate. It must therefore be held that, in any event, the conceptual similarity between the signs at issue would be only of minor significance.
41 It follows that the Board of Appeal was correct to conclude that the signs at issue are not conceptually similar.
42 In the light of all the foregoing, it must be held that, although the Board of Appeal correctly held that the earlier word sign NORVIR and the word sign Sorvir for which registration is sought were conceptually dissimilar, the Board ought to have concluded that there was a degree of visual and phonetic similarity.
43 Consequently, given that there is a degree of visual and phonetic similarity, the Board of Appeal erred in holding that one of the essential conditions for the application of Article 8(1)(b) of Regulation No 40/94, namely the similarity of the signs at issue, was lacking.
44 The Board of Appeal was under an obligation to undertake an overall assessment of the likelihood of confusion, in order to determine whether, given the fact that there was a degree of visual similarity and phonetic similarity between the signs at issue and the fact that the goods in question were identical, the public for which the goods concerned are intended will be likely to believe that those goods come from the same undertaking or from economically-linked undertakings.
45 Since the Board of Appeal erred in its assessment of the visual and phonetic similarities and did not undertake an overall assessment of the likelihood of confusion, it must be concluded that the Board infringed Article 8(1)(b) of Regulation No 40/94.
46 The single plea in law must therefore be upheld and the contested decision annulled on that basis.
Costs
47 Under Article 87(2) 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. Since OHIM has been unsuccessful, it must be ordered to bear its own costs and to pay the costs incurred by the applicant, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 February 2008 (Case R 809/2007-2);
2. Orders OHIM to bear its own costs and to pay those of Abbott Laboratories.
Delivered in open court in Luxembourg on 13 September 2010.
[Signatures]