JUDGMENT OF THE GENERAL COURT (First Chamber)
28 June 2023 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark OMEGOR VITALITY – Earlier EU figurative mark OMACOR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑496/22,
UGA Nutraceuticals Srl, established in Gubbio (Italy), represented by M. Riva, J. Graffer and A. Ottolini, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and T. Frydendahl, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
BASF AS, established in Oslo (Norway),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, V. Valančius (Rapporteur) and I. Gâlea, 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, UGA Nutraceuticals Srl, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 June 2022 (Case R 1200/2021-4) (‘the contested decision’).
Background to the dispute
2 On 14 June 2019, the applicant filed with EUIPO an application for registration of an EU trade mark for the word sign OMEGOR VITALITY.
3 The mark applied for covered goods in, inter alia, following the restriction made in the course of proceedings before EUIPO, Classes 5 and 29 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 5: ‘Dietary supplements and dietetic preparations; Pharmaceuticals and natural remedies’;
– Class 29: ‘Edible oils and fats, excluding seeds based oils other than chia seeds based oils; Dairy products and dairy substitutes; Fish, seafood and molluscs, not live; Meats; Birds eggs and egg products’.
4 On 19 August 2019, the other party to the proceedings before EUIPO, BASF AS, 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, inter alia, the following earlier marks:
– the EU figurative mark reproduced below, which was registered on 2 March 2005 under the number 1 414 531 and covers ‘pharmaceutical products in the form of Omega-3 fatty acids’ in Class 5:
– international registration number 934 400 designating the European Union, registered on 27 June 2007 relating to the sign OMACOR and designating goods in Class 5, corresponding to the following description: ‘pharmaceutical preparations; dietetic substances adapted for medical use; food supplements; vitamins’;
– the German word mark OMACOR, registered on 5 August 1998 under the number 2 105 074 and designating goods in Class 5, corresponding to the following description: ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of cardiovascular complaints, diabetes, IgA nephropathy, hyperlipidemia and pancreatitis’.
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 by the applicant, EUIPO invited the other party to the proceedings before EUIPO to adduce proof of genuine use of the earlier marks relied on in support of the opposition. That party complied with that request within the period prescribed.
8 On 29 June 2021, the Opposition Division partially upheld the opposition and refused registration of the mark applied for in so far as it covered the goods in Class 5.
9 On 9 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had partially upheld the opposition.
10 By the contested decision, the Board of Appeal dismissed the appeal. First of all, the Board of Appeal stated that it assessed the opposition in relation to the earlier EU figurative mark referred to in paragraph 5 above. It noted that the relevant public was composed of the public at large and customers with specific professional knowledge or expertise whose level of attention varied from above average to high. It also found that since the earlier mark was an EU trade mark, the relevant territory was that of the European Union. In addition, it took the view that the goods in question were identical or, at the very least, similar to an average degree. As regards the comparison of the signs at issue, the Board of Appeal noted that the word element ‘omegor’ of the mark applied for was the dominant element and that the descriptive term ‘vitality’ could not have a decisive effect on the comparison of the signs. The Board of Appeal found that the signs at issue displayed an average degree of visual and phonetic similarity and that, without meaning, the conceptual comparison between the signs at issue was not possible. It also took the view that the word element ‘vitality’ had a very limited impact on the conceptual perception for the English-speaking part of the relevant public. Consequently, in the light of the aforementioned factors, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001. It also stated that, since the opposition was partially successful on the basis of the earlier EU figurative mark, it was not necessary to examine the opposition on the basis of the other earlier marks.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– allow the application for registration;
– 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 claim to have the mark applied for allowed to proceed to registration
13 The applicant’s head of claim that the Court allow the application for registration in order that the mark be registered may be understood as a request that the Court alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited).
14 It follows that the applicant’s second head of claim must be rejected on the grounds of lack of jurisdiction.
Substance
15 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
16 In support of its single plea, the applicant claims, in essence, that the Board of Appeal made errors in the comparison of the goods covered by the signs at issue, in the assessment of the visual, phonetic and conceptual similarity of the signs at issue and in the assessment of the likelihood of confusion.
17 EUIPO disputes the applicant’s arguments.
18 Under Article 8(1)(b) of Regulation No 207/2009, as amended, 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 may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
21 In the present case, it must be pointed out that the applicant does not dispute the Board of Appeal’s decision to take into account only the earlier EU figurative mark No 1 414 531 in its assessment of the opposition. Consequently, the Court’s examination will relate only to that earlier EU figurative mark, on which the applicant relied in support of the present action.
The relevant public and its level of attention
22 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
23 In the present case, the Board of Appeal endorsed the finding of the Opposition Division that, first, the relevant public was composed of both the public at large and customers with specific professional knowledge or expertise, such as medical doctors, pharmacists and nutritionists, and secondly, the level of attention of that public varied from above average to high.
24 The Board of Appeal also found, in essence, that, since the earlier figurative mark was an EU trade mark, the relevant territory for the purposes of the assessment of the likelihood of confusion was that of the European Union.
25 The applicant does not dispute those assessments of the Board of Appeal. However, it argues that, as regards pharmaceutical preparations, the level of attention of the relevant public is high, in the case of both the public at large and healthcare professionals.
26 That argument cannot be interpreted as disputing the assessments of the Board of Appeal with regard to the relevant public and its level of attention since both a ‘higher-than-average level of attention’ and a ‘high level of attention’ indicate a heightened level of attentiveness on the part of the relevant public (see judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 27 and the case-law cited).
27 It is apparent from the case-law that, in relation to health-related products, the relevant public is likely to display a high or higher-than-average degree of attention, which means, in essence, that consumers are less likely to confuse different versions of those products (see judgments of 10 December 2014, Novartis v OHIM – Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraphs 20 and 21 and the case-law cited; of 10 February 2015, Boehringer Ingelheim International v OHIM – Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 45 and the case-law cited; and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 26 and the case-law cited).
28 Accordingly, it is necessary to uphold the Board of Appeal’s assessment that the relevant public consists of the public at large and customers with specific professional knowledge or expertise, whose level of attention is high or above average.
The comparison of the goods in question
29 According to settled case-law, in assessing the similarity of the goods or 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, 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).
30 In paragraphs 124 to 136 of the contested decision, the Board of Appeal took the view that the ‘natural remedies’ and the ‘dietary supplements and dietetic preparations’ in Class 5, covered by the mark applied for, and the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ in the same class, covered by the earlier mark, in respect of which proof of use of the earlier mark had been adduced were identical or, at the very least, similar to an average degree.
31 According to the Board of Appeal, the goods in question share the same purpose, namely to treat or improve certain health problems. In addition, dietary supplements and dietetic preparations may be interchangeable or used in combination with the earlier goods depending on the consumer’s medical condition. The nature and intended use of those goods are the same. Moreover, for the sake of completeness, the Board of Appeal found that the goods in question could be goods produced by the same manufactures and distributed by the same distribution channels, generally pharmacies.
32 The applicant argues that there is no similarity between the goods covered by the marks at issue. In particular, it submits that the goods covered by the earlier mark are very specific preparations which must be prescribed by a professional and which are aimed at users with critical clinical conditions. According to the applicant, there is no risk that a consumer who intends to purchase the goods covered by the mark applied for would receive the earlier goods, since the availability of those goods would be filtered by a professional. The applicant claims that the relevant public, the manufacturers of those goods, the purpose and the method of use of those goods is therefore dissimilar and the goods in question are also neither in competition nor complementary. In support of its arguments, the applicant argues that the Board of Appeal departed from earlier decisions in cases which were factually similar.
33 Furthermore, the applicant asserts that the Board of Appeal did not take account of the fact that, in many countries, the advertising of pharmaceutical products directly to consumers is strictly regulated and must generally be pre-approved. However, the goods covered by the mark applied for do not require any authorisation to be advertised. According to the applicant, such circumstances contribute to distinguishing the goods in question.
34 EUIPO disputes the applicant’s arguments.
35 In the present case, first, as regards the comparison between, on the one hand, the ‘natural remedies’ and, on the other, the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ it should be noted that, as the Board of Appeal stated in paragraph 127 of the contested decision, the category of pharmaceuticals is a broad and generic category which includes natural remedies.
36 Accordingly, the fact that the goods of the contested mark are, according to the applicant, very specific preparations, is not capable of calling into question the Board of Appeal’s finding that those goods were included in the broader category of ‘pharmaceuticals’ (see, to that effect, judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
37 In the light of the case-law referred to in paragraphs 29 and 36 above, the Board of Appeal did not err in finding that the goods in question were identical.
38 Secondly, as regards the comparison between the ‘dietary supplements and dietetic preparations’ and the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’, it should be observed that the applicant does not dispute the Board of Appeal’s assessment that the goods covered by the mark applied for may also be qualified as pharmaceuticals and other preparations for medical purposes.
39 In the present case, although the goods covered by the earlier mark have a specific purpose, the goods in question are intended in general to improve consumers’ state of health. As the Board of Appeal noted in paragraph 131 of the contested decision, the contested goods are aimed to overcome deficiencies by supplementing a diet with vitamins, minerals and acids (including omega-3 fatty acids) and are intended to prevent or treat certain health problems.
40 Furthermore, as the Board of Appeal correctly observed, the goods covered by the mark applied for may be sold through the same distribution channels, such as pharmacies. Even a partial overlap of the points of sale is likely to be an indication of similarity between the goods concerned, given that there are numerous points of sale, namely pharmacies, where the goods covered by the mark applied for and those covered by the earlier mark are sold (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 31).
41 As regards the applicant’s claim that, first, the provision of the goods covered by the mark applied for is not subject to a medical prescription and, secondly, the goods covered by the mark applied for, unlike the goods covered by the earlier mark, may be advertised, it should be pointed out that, for the purposes of assessing the existence of a likelihood of confusion, solely the goods covered by the marks and not the goods actually marketed under those marks must be taken into account. In that respect, the applicant’s argument is irrelevant in so far as the list of goods covered by the marks at issue does not contain any reference as to the way in which those goods are to be marketed.
42 In addition, the fact that the sale of the goods covered by the earlier mark and that of the goods covered by the mark applied for may be regulated by different legal provisions does not affect the relevant public’s perception, given that, when choosing goods, that public is only very rarely aware of the applicable legal provisions (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 32).
43 Accordingly, the Board of Appeal did not make an error of assessment in finding that the goods in question were either identical, or, at the very least, similar to an average degree.
44 Lastly, as regards the applicant’s argument concerning the alleged deviation from EUIPO’s previous decisions, it should be borne in mind that the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice (judgment of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53).
The comparison of the signs at issue
45 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).
– The distinctive and dominant elements of the signs at issue
46 As a preliminary point, it must be noted that the earlier figurative mark is composed of the word ‘omacor’ written in black and white, followed by a figurative device, which is placed in a square, in the form of a circle resembling the first letter ‘o’ of the word element. As regards the word mark applied for, it is composed of the two words ‘omegor vitality’ in standard black capital letters.
47 In the present case, first, the Board of Appeal observed, in paragraph 141 of the contested decision, that the word element ‘omacor’ was the most distinctive and dominant element of the earlier mark, whereas the figurative element played merely a secondary role. Moreover, it found that certain word elements of the signs at issue, namely ‘omegor’ and ‘omacor’, had no meaning for the relevant public and had a normal degree of distinctiveness. It should also be noted that, in paragraph 143 of the contested decision, the Board of Appeal found that those signs would not be broken down into several elements.
48 Secondly, in paragraph 144 of the contested decision, it took the view that the word element ‘vitality’ could be understood by the English-speaking part of the relevant public as meaning ‘the state of being strong and active; energy; the power giving continuance of life, present in all living thing[s]’. Moreover, it found that, in the light of the fact that the goods in question were pharmaceuticals, dietary supplements and dietetic preparations, the word element is perceived as non-distinctive, since it contained obvious and direct information on the kind and intended purpose of the goods concerned.
49 Those findings of the Board of Appeal are not disputed by the applicant. Furthermore, it must be noted that, the figurative element of the earlier figurative mark in the form of a circle resembling the letter ‘o’ is, as the Board of Appeal correctly observed, a mainly decorative element, even though it is not negligible in the overall impression produced by that sign.
50 In that respect, it should be recalled, as EUIPO did, that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
51 In addition, as regards the second word element ‘vitality’ of the contested sign, it should be held, as the Board of Appeal found, that it is non-descriptive, since, for the English-speaking part of the relevant public, it will may be understood as descriptive of the goods covered by the mark applied for (see, to that effect and by analogy, judgment of 31 January 2001, Sunrider v OHIM (VITALITE), T‑24/00, EU:T:2001:34, paragraph 29).
52 It should also be noted that the descriptive, non-distinctive or weakly distinctive elements of a trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression given by the mark (see, to that effect, judgments of 9 December 2020, Man and Machine v EUIPO – Bim Freelance (bim ready), T‑819/19, not published, EU:T:2020:596, paragraph 44 and the case-law cited, and of 12 May 2021, Sun Stars & Sons v EUIPO – Valvis Holding (AC AQUA AC), T‑638/19, not published, EU:T:2021:256, paragraphs 50 and 51).
53 Therefore, there is no need to call into question the assessments of the Board of Appeal that, first, those elements were either purely decorative or descriptive, and, secondly, those elements will not dominate the overall impression given by the signs at issue. As a result, the Board of Appeal did not err in taking the view that the word element ‘omacor’ was the dominant and distinctive element of the earlier mark for the purposes of the comparison of the signs.
– The visual similarity
54 The Board of Appeal found, in paragraph 145 of the contested decision, that the signs at issue displayed an average degree of visual similarity. According to the Board of Appeal, the signs at issue shared the sequence of letters ‘om’ and ‘or’ of their word elements and differed in the sequence of letters composed of their third and fourth letters, namely ‘ac’ and ‘eg’, respectively, in the presence of the non-distinctive word element ‘vitality’, as well as in their stylisation and the figurative element of the earlier mark. In addition, it took the view that the figurative element of the earlier mark played a secondary role in the overall impression produced by the earlier mark.
55 The applicant claims that the earlier mark is a figurative sign composed of one word, in standard characters and a graphic composition comprising a circular shape inscribed into a square, whereas the mark applied for is a word sign composed of the words ‘omegor’ and ‘vitality’. The applicant submits that the signs at issue differ in their central letters ‘ac’ and ‘eg’ of their word elements ‘omacor’ and ‘omegor’, as well as in the additional word ‘vitality’ in the contested sign and that the similarity between the signs at issue lies solely in the sequence of letters ‘om’ and ‘or’ at the beginning and at the end of the word elements ‘omacor’ and ‘omegor’. The applicant claims that, consequently, the marks are visually dissimilar.
56 EUIPO disputes the applicant’s arguments.
57 It must be held that, as the applicant argues, the signs at issue differ in their nature and their composition, since the earlier mark is a figurative mark composed of a word element and a figurative element, whereas the mark applied for consists of two word elements.
58 However, concerning the word elements, as the Board of Appeal correctly observed, the signs at issue coincide in the majority of their letters, with the exception of the sequence of letters ‘ac’ and ‘eg’ placed in the middle of the word element of the earlier mark and of the first word element of the mark applied for, respectively. It follows that, contrary to what the applicant claims, the differences between the signs at issue are outweighed by the identity of the initial parts, namely ‘om’, and the final parts, namely ‘or’ of the first word element of the mark applied for and of the word element of the earlier mark. Moreover, so far as concerns the non-distinctive and descriptive character of the second word element, namely ‘vitality’ of the mark applied for the English-speaking part of the relevant public, it should be noted, as EUIPO correctly made clear, that, in accordance with the case-law recalled in paragraph 52 above, the non-distinctive elements have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness.
59 Moreover, the difference between the signs at issue stemming from the presence in the earlier mark of a figurative element does not make it possible to rule out, in itself, a visual similarity between the signs at issue, in particular, in the light of the similarity relating to certain word elements of those marks.
60 Therefore, the Board of Appeal did not err in finding that the signs at issue displayed an average degree of visual similarity.
– The phonetic similarity
61 In paragraph 150 of the contested decision, the Board of Appeal found that there was an average degree of phonetic similarity between the signs at issue. Moreover, the Board of Appeal found that the word element ‘vitality’ of the mark applied for, which was non-distinctive and located in second position in the mark applied for, was less significant for the purposes of assessing the signs at issue.
62 The applicant does not dispute the Board of Appeal’s finding that the non-distinctive word element ‘vitality’ located in second position in the mark applied for was less significant for the purposes of assessing the signs at issue. However, it argues that, phonetically, the signs at issue differ in the pronunciation of their letter sequences ‘ac’ and ‘eg’ and in the word ‘vitality’. It also submits that the structure of vowels and consonants necessarily entails a phonetic difference between the signs. Furthermore, according to the applicant, the signs at issue share only one syllable, namely the first letter ‘o’. The differences which affect the other syllables therefore cause differences in intonation and rhythm when they are pronounced.
63 EUIPO disputes the applicant’s arguments.
64 As a preliminary point, as regards the alleged deviation from EUIPO’s previous decision raised by the applicant, it should be borne in mind, as stated in paragraph 44 above, that the legality of the decisions of EUIPO must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
65 In the present case, concerning the pronunciation of the different elements making up the signs at issue, it should be noted, as the Board of Appeal correctly found, that there is no need to take into account the figurative element of the earlier mark for the purposes of the phonetic comparison of those signs. Therefore, the fact that no account is taken of the figurative element in the phonetic comparison of the signs at issue makes the similarities between the signs stand out more clearly than in the visual comparison.
66 That having been clarified, it must be held that only the word elements of the signs at issue, namely the word element ‘omacor’ of the earlier mark and the word elements ‘omegor’ and ‘vitality’ of the mark applied for, will be pronounced by the relevant public.
67 It must be found that the Board of Appeal was correct in noting that the non-distinctive word element ‘vitality’ of the contested sign is of limited significance on account of the secondary position of that element.
68 Furthermore, it must be stated, as the Board of Appeal did, that the signs at issue are phonetically similar to an average degree on account of the presence of the sequence of letters ‘om’ and ‘or’ shared by those two signs. It follows that the sequence of vowels and consonants of those signs coincides, as the Board of Appeal correctly found, which makes their rhythm and intonation very similar.
69 Such a finding cannot be undermined by the applicant’s argument that the pronunciation of the signs at issue is dissimilar because the signs at issue share only one syllable, namely the first letter ‘o’. In that regard, it must be held that the differences which affect the other syllables are insufficient to significantly cause differences of intonation and rhythm in their pronunciation, since the signs at issue share the same sequence of vowels and consonants as regards the word elements ‘omegor’ and ‘omacor’.
70 Therefore, the Board of Appeal was correct in finding that the signs at issue were phonetically similar to an average degree.
– The conceptual similarity
71 First, in paragraph 151 of the contested decision, the Board of Appeal took the view that the marks at issue, taken as a whole, had no meaning for the relevant public. Nevertheless, it examined the possibility of associating the contested mark with the twenty-fourth and last letter of the Greek alphabet, ‘Ω’ (omega), finding that the mark applied for did not convey any specific meaning for the relevant public and that the word element of the earlier mark, namely ‘omacor’ is not associated with any meaning.
72 Secondly, to the extent that the meaning of the word element ‘vitality’ of the mark applied has a meaning for the English-speaking part of the relevant public, whereas the earlier mark has no meaning for that part of the public, the Board of Appeal stated, in paragraph 152 of the contested decision, that the marks were conceptually dissimilar. However, in view of the non-distinctive character of the word element ‘vitality’, its impact on the conceptual perception is limited.
73 The applicant does not dispute the Board of Appeal’s finding that the word element ‘vitality’ will have a limited impact on the conceptual perception of the signs at issue. On the other hand, it argues that the term ‘omeg’ in the mark applied for is perceived, for products containing omega-3, as referring to the twenty-fourth and last letter of the Greek alphabet. It that respect, it submits that the word ‘omega’ is almost entirely included in the earlier mark with the result that it would easily be perceived by a large part of the relevant public as referring to the twenty-fourth and last letter of the Greek alphabet. The applicant claims that, consequently, the marks at issue are conceptually dissimilar.
74 EUIPO disputes the applicant’s arguments.
75 It must be held, as the Board of Appeal found, that the word elements ‘omegor’ and ‘omacor’ have no meaning. Even if a part of the relevant public recognises in the element ‘omegor’ a reference to the Greek letter ‘omega’, that would not call into question the lack of meaning for that part of the public of the word ‘omegor’.
76 As regards the second word element, namely ‘vitality’ of the contested sign, as the Board of Appeal correctly noted, it will be understood by the English-speaking part of the relevant public. However, the non-distinctive character of that word element can justify only a very limited conceptual difference.
77 Therefore, the Board of Appeal was correct in finding, first, that the word elements ‘omegor’ and ‘omacor’ had no meaning, which made their conceptual comparison impossible and, secondly, that the second word element ‘vitality’ of the mark applied for had a very limited impact on the conceptual perception for the English-speaking part of the relevant public.
The global assessment of the likelihood of confusion
78 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).
79 In the present case, the Board of Appeal took the view that, given the lack of meaning of the earlier figurative mark’s word element and the fact that the figurative element of that mark was unremarkable, that mark had a normal degree of inherent distinctiveness. Furthermore, having recalled that the signs at issue were visually and phonetically similar to an average degree, it found that there was a likelihood of confusion both on the part of the public at large and the public of professionals of which the relevant public consists.
80 According to the applicant, the differences between the goods in question, the visual, phonetic and conceptual differences between the signs at issue and the above average level of attention of the relevant public are of such a nature as to rule out a likelihood of confusion.
81 EUIPO disputes the applicant’s arguments.
82 In the first place, the applicant does not dispute the Board of Appeal’s assessment that the word element of the earlier figurative mark has a normal degree of inherent distinctiveness in respect of the goods concerned.
83 In the second place, as is apparent from the grounds of the present judgment, the Board of Appeal’s findings concerning the definition and the level of attention of the relevant public, the similarity of the goods in question and the similarity of the signs at issue are not vitiated by error.
84 Therefore, the fact that the level of attention of the relevant public is high or above average is insufficient to rule out that that public believes that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.
85 It follows from all of the foregoing considerations that the single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and the action dismissed in its entirety.
Costs
86 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.
87 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event of the parties being summoned to attend an oral hearing. In the absence of a hearing, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders UGA Nutraceuticals Srl and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Delivered in open court in Luxembourg on 28 June 2023.
V. Di Bucci | | S. Papasavvas |