JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 March 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark NOCUVANT — Earlier word marks NOCUTIL — Proof of genuine use — Article 47(2) of Regulation (EU) 2017/1001 — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation 2017/1001)
In Case T‑321/18,
Serenity Pharmaceuticals LLC, established in Milford, Pennsylvania (United States), represented by J. Day, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Gebro Holding GmbH, established in Fieberbrunn (Austria), represented by M. Konzett, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 March 2018 (Case R 584/2017-2), relating to opposition proceedings between Gebro Holding and Allergan, Inc.,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 May 2018,
having regard to the response of EUIPO lodged at the Court Registry on 10 August 2018,
having regard to the response of the intervener lodged at the Court Registry on 10 August 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 3 July 2014, Allergan, Inc. filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the word sign NOCUVANT.
3 The goods in respect of which registration was sought are in 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: ‘Pharmaceutical preparations for the treatment of nocturia.’
4 The trade mark application was published in Community Trade Marks Bulletin No 158/2014 of 26 August 2014.
5 On 25 November 2014, the intervener, Gebro Holding GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– The EU word mark NOCUTIL filed on 29 April 2004 and registered on 8 September 2005 under number 3804903, designating goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; hormonal preparations, preparations for treating nocturnal enuresis, diabetes insipidus and polyuria syndrome’;
– the Austrian word mark NOCUTIL filed on 20 September 1994 and registered on 5 October 1994 under number 154716, designating, inter alia, goods in Class 5 corresponding to the following description: ‘Hormone preparations’;
– the international word mark NOCUTIL (designating Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Greece, Spain, France, Italy, Luxembourg, the Netherlands, Poland, Portugal, Romania, Slovenia, Slovakia, Finland and Sweden), filed and registered on 3 January 1995 under number 630579, designating, inter alia, goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and sanitary products; dietetic substances for medical use, food for babies; plasters, materials for dressings; material for stopping teeth and dental wax; disinfectants; products for weed and pest control’;
– the German word mark NOCUTIL filed on 21 November 1958 and registered on 21 August 1959 under number 728249, designating, inter alia, goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 At the request of Allergan, the intervener was invited, in accordance with Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), to furnish proof of genuine use of the earlier marks for the goods for which they were registered and on which the opposition was based.
9 The intervener therefore produced various documents to prove genuine use of the earlier marks.
10 On 27 January 2017, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009, relying solely on the earlier EU word mark NOCUTIL. It concluded that genuine use of that mark had not been proved for all the goods covered by that mark, but only for ‘pharmaceutical preparations for the treatment of nocturnal enuresis, diabetes insipidus and polyuria syndrome’, ‘hormonal preparations for treating nocturnal enuresis, diabetes insipidus and polyuria syndrome’ and ‘preparations for treating nocturnal enuresis, diabetes insipidus and polyuria syndrome’, and that there was, in the present case, a likelihood of confusion on the part of the German-speaking and Spanish-speaking public, given the identity of the goods and the average degree of similarity between the marks.
11 On 24 March 2017, Allergan filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision. The intervener, by an ancillary appeal, contested the decision of the Opposition Division in so far as it had found that genuine use had not been proved in relation to ‘preparations for treating nocturia’.
12 By decision of 8 March 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the main appeal and allowed the ancillary appeal.
13 In the first place, it confirmed the Opposition Division’s finding that the intervener had proved genuine use of the earlier mark during the relevant period.
14 In the second place, in the examination of the likelihood of confusion, first, the Board of Appeal upheld the finding of the Opposition Division, which was uncontested by Allergan, that the relevant public was the general public and professionals with specific knowledge and expertise in the field of healthcare. Next, concerning the comparison of the goods concerned, which are all in Class 5, the Board of Appeal found that those goods were identical or, at the very least, highly similar. As regards the comparison of the marks at issue, the Board of Appeal concluded that those marks were visually and phonetically similar to an average degree. Conceptually, the Board of Appeal held that, as the two signs were meaningless, a conceptual comparison was not possible. Finally, in the global assessment of the likelihood of confusion, the Board of Appeal concluded, despite the high level of attention of consumers and in view of the identical nature of the goods in question, the average distinctiveness of the earlier mark and the fact that, taken as a whole, the conflicting marks were similar to an average degree, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
15 Following a request lodged on 17 May 2018, the transfer of ownership of Allergan’s trade mark application NOCUVANT No 13053434 to the applicant, Serenity Pharmaceuticals LLC, was recorded in EUIPO’s register on 18 May 2018.
Forms of order sought
16 The applicant claims that the Court should:
– annul the contested decision;
– annul the Opposition Division’s decision;
– order EUIPO to pay the costs.
17 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
18 The intervener contends that the Court should:
– dismiss the application;
– uphold the contested decision;
– dismiss the application for registration in its entirety;
– order the applicant to pay the costs relating to both the proceedings before EUIPO and the proceedings before the Court.
Law
Admissibility of Annexes A 8 and A 9 to the application
19 The Applicant produced, in Annex A 8 to the application, examples to demonstrate the wide understanding of the word element ‘noc’ in the medical and physiological fields and, consequently, the weak distinctive character of that element in those fields. It also provided, in Annex A 9 to the application, a summary of its searches on the use in the European Union of marks containing the prefix ‘noc’ in the pharmaceutical field.
20 EUIPO and the intervener submit that those two annexes are inadmissible on the ground that they have been produced for the first time before the Court.
21 In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001. It is not therefore the Court’s function to review the facts in the light of evidence produced for the first time before it (judgments of 19 November 2008, Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, not published, EU:T:2008:512, paragraph 20 and of 23 January 2018, Wenger v EUIPO — Swissgear (SWISSGEAR), T‑869/16, not published, EU:T:2018:23, paragraph 21).
22 Accordingly, it is necessary to declare inadmissible Annexes A 8 and A 9 to the application, which were not produced by the applicant in the course of the administrative proceedings. The review of legality is, therefore, to be carried out in the light solely of the evidence which was produced in those proceedings as it appears in EUIPO’s case file (see judgment of 22 March 2018, Safe Skies v EUIPO — Travel Sentry (TSA LOCK), T‑60/17, not published, EU:T:2018:164, paragraph 13 and the case-law cited).
23 Consequently, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
24 In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 47(2) of Regulation 2017/1001 and, secondly, infringement of Article 8(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 47(2) of Regulation 2017/1001
25 By its first plea, the applicant submits, in essence, that the Board of Appeal erred in confirming the Opposition Division’s finding that the intervener had proved genuine use of the earlier mark to the requisite legal standard. In particular, it considers that the Board of Appeal’s finding as to the geographical scope of the use of the earlier mark is not supported by the evidence adduced and that the contested decision is vitiated by a contradiction in that regard.
26 EUIPO and the intervener dispute the applicant’s submission and contend that the first plea should be rejected.
27 It must be borne in mind that, under Article 47(2) of Regulation 2017/1001, an applicant for an EU trade mark, against which opposition proceedings have been filed, may require proof that the earlier mark relied on in support of those proceedings has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and on which the opposition is based, during the five-year period preceding publication of the application.
28 According to settled case-law, the ratio legis of the requirement that the earlier trade mark must have been put to genuine use if it is to be capable of being used in opposition to a European Union trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the trade mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (judgment of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions, C‑609/11 P, EU:C:2013:592, paragraph 72; see also, judgment of 13 July 2018, Star Television Productions v EUIPO — Marc Dorcel (STAR), T‑797/17, not published, EU:T:2018:469, paragraph 25 and the case-law cited).
29 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43; see also judgment of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 37 and the case-law cited).
30 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (see judgment of 17 March 2016, Naazneen Investments v OHIM, C‑252/15 P, not published, EU:C:2016:178, paragraph 56 and the case-law cited).
31 In order to ascertain whether use is significant enough to maintain or create market shares for those goods or services, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, Sunrider v OHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 42).
32 In that regard, the characteristics of the goods or services protected by the mark, the frequency or regularity of the use of that mark, whether that mark is used for the purpose of marketing all of the identical goods or services of the proprietor or merely some of them, and also the territorial scope of the use, are among the factors which may be taken into account (see, by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 22; judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 30).
33 Lastly, it must be pointed out that it is not possible to determine a priori, and in the abstract, what quantitative threshold or what territorial scope should be chosen in order to determine whether use is genuine. A de minimis rule, which would not allow EUIPO or, on appeal, the Court to appraise all the circumstances of the dispute before it, cannot therefore be laid down (see, by analogy, judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55).
34 It is necessary to examine, in the light of those considerations, whether the Board of Appeal erred in confirming that the intervener had proved to the required legal standard that the earlier EU word mark NOCUTIL, the only trade mark examined by the Opposition Division, was put to genuine use during the relevant period.
35 In the present case, as the trade mark application was published on 26 August 2014, the five-year period referred to in Article 47(2) and (3) of Regulation 2017/1001 covers, as correctly stated by the Board of Appeal in paragraph 26 of the contested decision, the period from 26 August 2009 to 25 August 2014 inclusive (‘the relevant period’), which the applicant does not dispute. Since the earlier mark at issue is an EU trade mark, the relevant territory is the European Union.
36 It is apparent from the documents contained in the EUIPO file forwarded to the Court that, following the invitation made to it, the intervener produced a number of documents in order to establish genuine use of the earlier mark during the relevant period.
37 Those documents include in particular:
– copies of a leaflet, partially translated into English, concerning NOCUTIL tablets marketed in Germany and which are used, inter alia, in the treatment of nocturnal enuresis;
– printed extracts of the editions for the years 2011-2012 and 2012-2013 of the Austria-Codex, a specialised Austrian publication on the manufacture and marketing of pharmaceutical products, for the purpose of prescribing NOCUTIL in tablet and nasal spray form;
– invoices for NOCUTIL tablets and delivery notes dated 2009 to 2014, addressed to various customers in Denmark, Germany, Hungary and Sweden;
– advertising material and marketing documents in various languages (also orders and receipts related to that material and those documents), referring to goods covered by the mark NOCUTIL.
38 It is not disputed that those documents, which date from the relevant period and which explicitly refer to the NOCUTIL mark, are capable of demonstrating, as required by settled case-law, commercial use of that mark. Those documents are such as to prove that the earlier mark was used in a way that can be regarded as warranted in the economic sector concerned to maintain or create a share in the market for the goods protected by the mark (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited).
39 Nor is it disputed, as confirmed by the Board of Appeal in paragraph 30 of the contested decision, that the mark was used as registered.
40 The Board of Appeal, in order to justify its conclusion that genuine use of the earlier mark had been proved, essentially took the view, first, that the use that was made of that mark in the territory of Germany was, in the present case, sufficient and, secondly, that the evidence provided also related to other territories, namely Denmark, Hungary, Austria and Sweden.
41 However, according to the applicant, the Board of Appeal’s finding that the intervener had provided proof of genuine use of the earlier mark was incorrect for two main reasons, relating, in essence, to the geographical extent and the intensity of the use made of the earlier mark.
42 First, as regards the geographical extent of use, the applicant maintains that, since the intervener did not rely on — or indeed adduce — evidence that actual sales of goods under the mark NOCUTIL had been made outside Germany and Hungary, it was not proved that that mark was the subject of use throughout the European Union. According to the applicant, no feature of the pharmaceutical market could explain the limited geographical extent of the use that was made of that mark. In the absence of a clear statement of the distribution of sales country by country, it was impossible to ascertain whether the earlier mark had been put to genuine use in one or more Member States.
43 In that regard, it should be borne in mind, as the Board of Appeal stated in paragraph 32 of the contested decision, that it is not necessary for use of a trade mark to be geographically widespread in order to be deemed genuine. It follows from the case-law that it cannot be ruled out that, in certain circumstances, the market for the goods or services for which an EU trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the EU trade mark on that territory might satisfy the conditions for genuine use of an EU trade mark (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 50 and 54). That may in particular be the case for the pharmaceutical market, which is characterised by a system of marketing authorisation and certification of protection which may be issued on a national basis.
44 In addition to the specific characteristics of that market, it is not disputed in the present case that, as the Board of Appeal stated in paragraph 33 of the contested decision, the German market, to which the majority of the invoices provided by the intervener relate, represents a substantial part of the territory of the European Union.
45 Furthermore, it should be noted that the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 76, and of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 30).
46 In any event, it is evident that the evidence of use of the earlier mark did not relate to just one, but to several Member States. As the Board of Appeal pointed out, the invoices and delivery notes provided as examples were addressed to customers in Denmark, Germany, Hungary and Sweden. Furthermore, the Board of Appeal correctly considered that, although the applicant had not provided any invoices for Austria, the extracts from the Austria-Codex, which identifies only pharmaceutical products actually offered for sale, established that the goods were also marketed under the mark NOCUTIL in Austria. All those documents show that the use made of the earlier mark cannot be regarded as purely symbolic.
47 Contrary to what the applicant maintains, paragraph 35 of the contested decision is not vitiated by a contradiction. The Board of Appeal merely intended to indicate in that paragraph that, while certain documents, including the order forms and receipts for the printing of advertising material and packaging of products, did not allow precise supporting figures to be given as to the extent of the distribution of the goods, they proved, on the other hand, that the use of the earlier mark was significant. The Board of Appeal ruled to the same effect in paragraph 36 of the contested decision as regards the use of the earlier mark in Austria, recalling, correctly, that it was not always necessary to provide information on the quantity of goods actually sold to establish genuine use.
48 Secondly, as regards the intensity of the use made of the earlier mark, the applicant submits that, contrary to what the Board of Appeal found, apart from the fact that the specific characteristics of pharmaceutical products cannot explain the existence of a geographically restricted market, it required a turnover of a certain level to be attained. The applicant considers that sales of the goods in question, which amounted to EUR 677 000 over a five-year period, are insignificant when they are applied to the EU pharmaceutical market.
49 In that regard, it is sufficient to state that, in accordance with settled case-law (see paragraph 28 above), the requirement of genuine use is not intended to assess commercial success or to review the economic strategy of an undertaking; nor is it intended to restrict trade mark protection to cases where large-scale commercial use has been made of the marks.
50 Therefore, the turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of commercial activity, production or marketing capacities or the degree of diversification of the undertaking using the trade mark, and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
51 In the present case, even if, as the applicant submits, the attainment of a turnover of EUR 677 000 over a five-year period is considered to be low when applied to the EU pharmaceutical market as a whole, it does not demonstrate that the earlier mark was not put to genuine use in the relevant territory.
52 In that regard, unlike the situation at issue in the case giving rise to the judgment of 15 September 2017, Viridis Pharmaceutical v EUIPO — Hecht-Pharma (Boswelan) (T‑276/16, not published, under appeal, EU:T:2017:611), expressly referred to by the applicant in its written pleadings, it is clear that the intervener was, in the present case, able to adduce evidence of external use of the earlier mark, namely evidence of sales or marketing of goods under that mark.
53 It follows from all the foregoing considerations that the Board of Appeal did not err in finding that, assessed globally, the documents submitted by the intervener were sufficient to prove genuine use of the earlier trade mark in the territory of the European Union during the relevant period.
54 Consequently, the first plea must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
55 By its second plea, the applicant complains that the Board of Appeal erred in finding that the signs at issue were similar and, therefore, 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.
56 EUIPO and the intervener dispute the applicant’s arguments and contend that the present plea should be rejected.
57 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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.
58 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same 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).
59 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see, by analogy, 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).
– The relevant public
60 According to the case-law, 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).
61 In paragraph 42 of the contested decision, the Board of Appeal upheld the Opposition Division’s finding that the relevant public consisted of the general public and professionals with specific knowledge and expertise in the field of healthcare. It also found that the level of attention of consumers of the goods in question was high, since those goods have an impact on health.
62 There is no reason to call those findings into question. Even if, in the present case, as the applicant submits, more weight must be given to the professional public, as the goods in question are medicinal products dispensed under prescription, the fact remains that the Board of Appeal, for the purposes of assessing the existence of a likelihood of confusion, ultimately considered that all of the relevant public displayed a high level of attention. The Board of Appeal therefore concluded, in paragraph 62 of the contested decision, that ‘even for the part of the relevant public that might perceive [the element “nocu” as alluding to “nocturia” or “nocturnal”, there [was] a likelihood of confusion’.
63 In any event, it should be recalled that, even though the choice of certain products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraphs 56 to 63, and of 9 February 2011, Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraphs 42 to 45).
– The comparison of the goods
64 Since the parties do not dispute the Board of Appeal’s finding, in paragraph 44 of the contested decision, that the goods covered by the two marks, all for use in the treatment of nocturia, are identical, and as such a finding is not flawed, it must be upheld.
– The comparison of the signs
65 It should be borne in mind that 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). It should be recalled that the greater or lesser degree of distinctiveness of the elements of the marks at issue is one of the relevant factors in assessing the similarity of the signs (see, to that effect, judgment of 14 September 2017, Aldi Einkauf v EUIPO — Weetabix (Alpenschmaus), T‑103/16, not published, EU:T:2017:605, paragraph 47 and the case-law cited).
66 In the present case, the applicant submits, in essence, that the word marks NOCUVANT and NOCUTIL are not similar, in so far as the prefix ‘noc’, which, as shown by the large number of registrations of trade marks containing such a suffix, has an allusive character and a limited weight in the comparison of the signs at issue. As is very common in the pharmaceutical field, that prefix makes direct reference to the condition that the products in question are intended to treat, namely nocturia or nocturnal enuresis. It therefore has weak distinctive character. Since the word elements ‘vant’ and ‘util’ are clearly distinct, visually, phonetically and conceptually, the signs at issue cannot, according to the applicant, be considered to be similar.
67 It should be noted that the two marks contain the word element ‘nocu’, which, moreover, corresponds to the two first syllables of each of those marks.
68 In accordance with the case-law, consumers normally attach more importance to the first part of trade marks. It is only when the element placed in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue that the relevant public will attach more importance to their final part, which is the most distinctive (see judgment of 6 June 2013, McNeil v OHIM — Alkalon (NICORONO), T‑580/11, not published, EU:T:2013:301, paragraphs 60 and 61 and the case-law cited; judgment of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 52).
69 In that regard, the Board of Appeal rightly noted that it cannot be presumed that the element ‘nocu’, common to the marks at issue, will be perceived by the whole of the relevant public as being descriptive of, or at least alluding to, the goods concerned. The fact that the first four letters of the word signs at issue (of the seven or eight letters which, respectively, compose them) coincide cannot, when comparing the signs, be ignored merely because the prefix ‘nocu’ might, for part of the relevant public, be weakly distinctive.
70 It should be recalled that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraphs 58 and 67 and the case-law cited).
71 The fact that the first four letters of the word signs at issue, composed of seven and eight letters respectively, coincide leads to the conclusion that there is a partial equality between them, implying that they display a certain degree of visual and phonetic similarity.
72 Moreover, the Board of Appeal was correct to find, inter alia, in paragraph 49 of the contested decision, that it was not established, for a significant part of the relevant public, in particular for German-speaking consumers, that the prefix ‘noc[u]’ would be perceived as referring to the terms ‘nocturia’ or ‘nocturnal’ (night) and therefore as being descriptive of the goods in question, or at least as a reference by way of allusion to those goods.
73 Therefore, the Board of Appeal correctly found, in paragraph 51 of the contested decision, that, for that part of the relevant public, the signs at issue were visually and phonetically similar to an average degree.
74 As regards the conceptual comparison of the two marks at issue, the Board of Appeal did not err in finding that such a comparison could not be made since the words in question had no meaning for the consumer.
75 In the light of the foregoing considerations, it must be concluded that the signs at issue have an average degree of similarity, which corresponds to the conclusion reached by the Board of Appeal.
76 That conclusion cannot be called into question by the applicant’s submission that no entity can reasonably claim exclusivity of the allusive prefix ‘noc’.
77 Apart from the fact that it has not been established, in the present case, that that prefix was devoid of distinctive character for part of the relevant public, it is necessary, in any event, to consider that the finding of the existence of a likelihood of confusion between the marks NOCUVANT and NOCUTIL does not amount to attributing to the proprietor of the earlier mark a monopoly on the element ‘noc’, given that a finding of a likelihood of confusion leads solely to the protection of a certain combination of elements but does not protect a descriptive element forming part of that combination as such (see, to that effect, judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑548/12, EU:T:2015:478, paragraph 94 and the case-law cited).
– The global assessment of the likelihood of confusion
78 According to settled case-law, 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 the similarity 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 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 7 July 2017, Axel Springer v EUIPO — Stiftung Warentest (TestBild), T‑359/16, not published, EU:T:2017:477, paragraph 76).
80 In addition, 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, easyHotel, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
81 Given that the goods covered by the marks at issue are identical– which the applicant does not dispute — and that those marks are similar to an average degree, the Board of Appeal was entitled to conclude, despite the high level of attention of the consumers, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
82 Consequently, the second plea in law must be rejected as unfounded.
83 In the light of all the foregoing considerations, the action must be dismissed in its entirety, and, therefore, the first head of claim of EUIPO and, in essence, the first to third heads of claim of the intervener must be upheld.
84 In that regard, it should be noted that the intervener’s second and third heads of claim amount to requesting the dismissal of the action and are thus identical to its first head of claim (see, to that effect, judgment of 12 July 2018, Consejo Regulador del Cava v EUIPO — Cave de Tain-l’Hermitage, union des propriétaires (CAVE DE TAIN), T‑774/16, not published, EU:T:2018:441, paragraph 99 and the case-law cited).
Costs
85 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.
86 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.
87 As regards the intervener’s heads of claim relating to the costs incurred in the proceedings before EUIPO, it is sufficient to observe that those costs continue to be governed by the contested decision (see, to that effect, judgment of 10 November 2016, Polo Club v EUIPO — Lifestyle Equities (POLO CLUB SAINT-TROPEZ HARAS DE GASSIN), T‑67/15, not published, EU:T:2016:657, paragraph 120).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Serenity Pharmaceuticals LLC to pay the costs.
Delivered in open court in Luxembourg on 6 March 2019.