JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 April 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark Pherla – Earlier EU word mark VERLA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑357/23,
Verla-Pharm Arzneimittel GmbH & Co. KG, established in Tutzing (Germany), represented by M.-C. Seiler, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Valeria Converso, residing in San Giorgio a Cremano (Italy), represented by F. Musella, lawyer,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and L. Spangsberg Grønfeldt, 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, Verla-Pharm Arzneimittel GmbH & Co. KG, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 February 2023 (Case R 268/2022-2) (‘the contested decision’).
Background to the dispute
2 On 8 October 2020, the intervener, Ms Valeria Converso, filed an application for registration of an EU trade mark in respect of the following figurative sign:
3 The mark applied for covers goods in Classes 3, 5 and 10 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4 The trade mark application was published in European Union Trademarks Bulletin No 199/2020 on 19 October 2020.
5 On 18 January 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of some of the goods covered, namely the goods in Class 5, corresponding to the description contained in paragraph 3 of the contested decision.
6 The opposition was based on, inter alia, the EU word mark VERLA, which covers goods in Classes 5, 29 and 30 corresponding, for each of those classes, to the description in paragraph 5 of the contested decision.
7 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).
8 By decision of 20 May 2021, the Opposition Division rejected the opposition in its entirety, finding that there was no likelihood of confusion.
9 On 10 February 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10 By the contested decision, the Board of Appeal dismissed the applicant’s appeal on the basis of Article 8(1)(b) of Regulation 2017/1001, finding that there was no likelihood of confusion.
11 In essence, in view of the assumed identical nature of the goods at issue, the low degree of visual and phonetic similarity between the signs at issue, the finding that a conceptual comparison was not possible for part of the relevant public or revealed conceptual differences between those signs for another part of that public and the normal degree of distinctiveness of the earlier mark, the Board of Appeal concluded that there was, for the purposes of Article 8(1)(b) of Regulation 2017/1001, no likelihood of confusion on the part of the relevant public, which displayed a level of attention varying from average to high.
Forms of order sought
12 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– uphold the opposition in its entirety and reject the contested trade mark application in respect of all the goods in Class 5 covered by the opposition;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The issue of whether the evidence submitted for the first time before the Court is admissible
15 The applicant produced, in support of its action, inter alia, two annexes, namely Annexes 5 and 6 to the application, which relate to explanatory references concerning the German and Dutch rules of pronunciation with regard to the consonant ‘v’ and the consonants ‘ph’.
16 It is apparent from EUIPO’s case file that that evidence was not produced during the administrative proceedings before EUIPO. However, it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Consequently, the documents which the applicant has produced for the first time before the Court must be excluded and there is no need 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).
17 It follows from the foregoing that the newly submitted evidence, namely Annexes 5 and 6 to the application, is inadmissible.
The first head of claim, seeking the annulment of the contested decision
18 In support of its action, the applicant relies on three pleas in law.
19 The first plea alleges a failure to state reasons which is based on the first sentence of Article 94(1) of Regulation 2017/1001 and on Article 41(1) and (2)(c) of the Charter of Fundamental Rights of the European Union.
20 The second plea alleges infringement of the right to be heard based on the second sentence of Article 94(1) of Regulation 2017/1001 and Article 41(2)(a) of the Charter of Fundamental Rights.
21 The third plea, which it is appropriate to examine first of all, alleges infringement of Article 8(1)(b) of Regulation 2017/1001. That plea consists of two parts. In the context of the first part, the applicant claims that the Board of Appeal did not assess the issue of whether the signs at issue were phonetically identical in the light of the German rules of pronunciation. In the context of the second part, it submits that the Board of Appeal did not correctly assess the visual and phonetic similarity of those signs, thus vitiating its assessment regarding the comparison of the signs.
22 EUIPO and the intervener dispute those arguments.
23 It is appropriate to examine, first of all, the applicant’s arguments in the context of the second part of the third plea, disputing the Board of Appeal’s comparison of the signs at issue and its global assessment of the likelihood of confusion.
24 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
25 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
26 Lastly, 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).
The relevant public
27 The Board of Appeal found that the goods covered by the marks at issue were aimed at the general public and at the specialist public in the field of medicine. It also pointed out that the level of attention of that public, taken as a whole, could vary from average to high, depending on, in particular, the specialised nature of the goods. Lastly, it found that the territory of the European Union was the relevant territory for the purposes of assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
28 There is nothing in the case file which makes it possible to call into question those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant.
The comparison of the goods
29 The Opposition Division found that some of the goods covered by the marks at issue were either identical or similar. However, for reasons of procedural economy, it relied on the assumption that those goods were identical. The Board of Appeal followed the same approach, an approach which is not disputed by the applicant.
The comparison of the signs
30 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).
31 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
32 In the present case, the signs to be compared are, on the one hand, the figurative mark applied for consisting of the word element ‘pherla’ represented in stylised grey letters, above which there is a representation of a curve which is also in grey, and, on the other hand, the earlier word mark consisting of the word element ‘verla’.
– The distinctive and dominant elements
33 As regards the earlier mark, the Board of Appeal found, like the Opposition Division, that the word element ‘verla’ was distinctive.
34 As regards the mark applied for, the Board of Appeal found that the word element ‘pherla’ was meaningless for the relevant public and was therefore distinctive to an average degree. By contrast, the Board of Appeal also found that the representation of the grey curve was a purely decorative element.
35 There is nothing in the case file which makes it possible to call into question those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant.
– The visual comparison
36 The Board of Appeal found, in paragraph 53 of the contested decision, that the signs at issue were visually similar to a low degree.
37 The applicant disputes the Board of Appeal’s assessments, claiming that the degree of visual similarity between the signs at issue is average.
38 EUIPO and the intervener dispute the applicant’s arguments.
39 It must be pointed out at the outset that it is apparent from the case-law that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since both types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
40 Furthermore, it must also be borne in mind that, according to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 9 September 2019, SLL Service v EUIPO – Elfa International (LUMIN8), T‑680/18, not published, EU:T:2019:565, paragraph 32 and the case-law cited).
41 First, it is common ground that the signs at issue contain four identical letters placed in the same order, namely the letters ‘e’, ‘r’, ‘l’ and ‘a’. Consequently, the majority of the letters comprising those marks (four out of six letters in the mark applied for and four out of five letters in the earlier mark) are identical in both marks, even though, as the Board of Appeal found in paragraph 49 of the contested decision, they differ by one letter in the total number of letters of which they consist.
42 Secondly, the Board of Appeal correctly found in paragraph 48 of the contested decision that the letter ‘v’ and the letters ‘ph’ were visually different. Furthermore, although the Board of Appeal pointed out that difference by stating that it was relying on the principle that consumers pay greater attention to the beginning of the sign, it must be pointed out that, in accordance with the case-law cited in paragraph 30 above, the examination of the similarity of the marks at issue must take into account the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraph 40). In that regard, it must be held that the difference relating to the initial letters of the signs at issue is not sufficient to offset the visual similarity produced by the group of letters ‘erla’, which is common to those signs, and will not preclude the relevant public from perceiving the four-letter sequence ‘e’, ‘r’, ‘l’ and ‘a’, which is clearly identifiable within those marks.
43 Thirdly, the figurative elements of the mark applied for, as is apparent from paragraph 34 above, are, in the light of their purely decorative function, of secondary importance in the visual perception of that mark. The figurative element, which consists of a curved grey line, is likely to be perceived as being a merely decorative element, with the result that the relevant public will probably not perceive that element as being visually dominant (see, to that effect, judgment of 12 July 2019, Audimas v EUIPO – Audi (AUDIMAS), T‑467/18, not published, EU:T:2019:513, paragraph 52 and the case-law cited). This will also be the case with regard to the relatively simple stylisation of the word element ‘pherla’. Accordingly, the existence of a certain degree of visual similarity between the signs at issue on account of their elements in common cannot, contrary to what the Board of Appeal found in paragraph 51 of the contested decision, be offset by the presence, in the mark applied for, of figurative elements which are not very distinctive.
44 It must therefore be held that the signs at issue are visually similar to an average degree. Consequently, the Board of Appeal made an error of assessment when it concluded in the contested decision that those signs were visually similar only to a low degree.
– The phonetic comparison
45 The Board of Appeal found that the signs at issue were phonetically similar to a low degree. In essence, it observed that the difference resulting from the pronunciation of the letter ‘v’ and the letters ‘ph’, placed at the beginning of those signs, was likely to be perceived as having a significant impact on the relevant public’s phonetic perception of those signs.
46 The applicant submits that, irrespective of the failure to take into consideration the pronunciation of the signs at issue in German, the Board of Appeal did not correctly assess their phonetic similarity. It submits that those signs are phonetically similar to at least an above average degree.
47 EUIPO and the intervener dispute the applicant’s arguments. EUIPO contends, in essence, that, since the Board of Appeal endorsed the Opposition Division’s findings, it implicitly, but necessarily, took the view that, even taking into account the German-speaking public, the degree of phonetic similarity between the signs at issue was low. It also submits that, in any event, if that complaint alleging that there was no examination of the phonetic similarity of those marks with regard to the German-speaking public were to be upheld, it would not lead to the annulment of the contested decision. The intervener acknowledges that the signs at issue coincide in the pronunciation of the letters ‘e’, ‘r’, ‘l’ and ‘a’, but differ in their initial letters and in the number of letters of which those signs consist. She concludes that those signs are distinguished by the length and the rhythm of their pronunciation and that they are therefore phonetically similar only to a very low degree.
48 In that regard, it is important to point out that, even disregarding the pronunciation of the letter ‘v’ and the letters ‘ph’ in German and even if it could be held, as the Board of Appeal found, that the pronunciation of the beginning of the signs at issue differs on account of those letters, the signs in question have the sequence of letters ‘e’, ‘r’, ‘l’ and ‘a’ in common.
49 Consequently, the signs at issue coincide in the pronunciation of the sequence of letters ‘e’, ‘r’, ‘l’ and ‘a’, which constitute four out of the five letters in the earlier mark and four out of the six letters in the mark applied for. Irrespective of the different pronunciation rules in different parts of the relevant territory, namely the European Union, the pronunciation of those signs coincides in the group of letters ‘erla’.
50 Thus, even if, at least for a part of the relevant public, the pronunciation of the initial letters ‘v’ and ‘ph’ precludes the phonetic identity of the signs at issue, the pronunciation of the group of letters ‘erla’, which is common to those signs, is on its own liable to create a strong phonetic similarity between those signs.
51 Furthermore, the word elements of the signs at issue consist of two syllables and, consequently, have the same rhythm and are pronounced with the same intonation.
52 It follows from the foregoing that the signs at issue must be held to be phonetically similar to at least an average degree.
53 Accordingly, the Board of Appeal made an error of assessment when it concluded, in paragraph 53 of the contested decision, that the signs at issue were phonetically similar only to a low degree.
– The conceptual comparison
54 The Board of Appeal found, in paragraphs 54 and 55 of the contested decision, that, since the signs at issue were meaningless for part of the relevant public, a conceptual comparison of those signs was not, in accordance with the case-law, possible for that part of the relevant public.
55 The Board of Appeal added, in paragraph 57 of the contested decision, that for the part of the relevant public for which the earlier mark VERLA had a meaning, the signs at issue were not conceptually similar.
56 There is nothing in the case file which makes it possible to call into question those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant.
– The distinctiveness of the earlier mark
57 In the present case, the Board of Appeal observed, in paragraph 61 of the contested decision, that the inherent distinctiveness of the earlier mark was normal.
58 There is nothing in the case file which makes it possible to call into question that assessment, which is not, moreover, disputed by the applicant.
The global assessment of the likelihood of confusion
59 The applicant disputes the Board of Appeal’s finding that there was no likelihood of confusion in the present case. It submits that the visual difference resulting from the letter ‘v’ and the letters ‘ph’ at the beginning of the signs at issue does not make it possible to call into question their visual similarity and their phonetic identity and that there is therefore a likelihood of confusion.
60 EUIPO and the intervener dispute the applicant’s arguments.
61 It must be borne in mind that 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).
62 In the present case, in paragraphs 63 and 64 of the contested decision, for the purposes of the global assessment of the likelihood of confusion, the Board of Appeal took into account the findings that, first, the relevant public, consisting of the general public and professionals, displayed a level of attention varying from average to high, secondly, the goods concerned were assumed to be identical, thirdly, the signs at issue were visually and phonetically similar to a low degree and were not conceptually similar for part of the relevant public, whereas a conceptual comparison was not possible for the other part of that public, and, fourthly, the distinctiveness of the earlier mark was normal. It concluded that there was no likelihood of confusion.
63 However, as has been held in paragraphs 44 and 52 above, and contrary to what the Board of Appeal incorrectly found, the signs at issue are visually similar to an average degree and phonetically similar to, at least, an average degree.
64 Consequently, in accordance with the principle of interdependence between the factors taken into account, which has been referred to in paragraph 61 above, in view of the average degree of visual similarity and at least average degree of phonetic similarity between the signs at issue, the Board of Appeal could not, in the present case, relying on the assumption that the goods concerned were identical (see paragraph 29 above), rule out the existence of a likelihood of confusion.
65 It follows that the Board of Appeal erred in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, at least if the goods were identical.
66 The second part of the third plea must therefore be upheld, that plea must be held to be well founded and, consequently, the contested decision must be annulled, without it being necessary to examine the other pleas and complaints relied on by the applicant.
The second head of claim, put forward as a principal claim, requesting that the opposition be upheld and that the application for registration be rejected in respect of the goods in Class 5
67 By its second head of claim, the applicant requests that the Court uphold the opposition in its entirety and reject the application for registration of the mark referred to in paragraph 2 above in respect of all the goods referred to in paragraph 5 above.
68 It must be pointed out that, by that head of claim, the applicant requests, in essence, that the Court adopt the decision which, according to the applicant, EUIPO ought to have taken, namely a decision finding that the conditions for upholding the opposition which it had brought against the registration of the mark applied for were satisfied with regard to the goods in Class 5. Consequently, the applicant requests that the Court exercise its power to alter decisions, as provided for in Article 72(3) of Regulation 2017/1001.
69 In that regard, it must be borne in mind that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
70 In the present case, the conditions for the exercise of the Court’s power to alter decisions are not satisfied, since the Court is not in a position to determine what decision the Board of Appeal was required to take.
71 In paragraph 63 of the contested decision, the Board of Appeal concluded that there was no likelihood of confusion, finding that the goods concerned were assumed to be identical, as had been pointed out in paragraph 35 of that decision, for reasons of procedural economy.
72 However, as is apparent from paragraph 64 above, the error of assessment relating to the lack of any likelihood of confusion has been held to exist in so far as the goods concerned had to be considered to be identical. Since the Board of Appeal did not, however, carry out an assessment in concreto of all the goods concerned in order to determine whether or not they were all in fact identical, the Court, the task of which it is not to assess for the first time issues which were not examined by the Board of Appeal, is not in a position to determine the goods in respect of which the opposition, based on Article 8(1)(b) of Regulation 2017/1001, must be upheld and, consequently, is not in a position to exercise its power to alter decisions.
73 It follows that the claim for alteration, contained, in essence, in the second head of claim, must be rejected.
Costs
74 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.
75 In the present case, EUIPO and the intervener have been unsuccessful in their main heads of claim and the applicant has applied for only EUIPO to be ordered to pay the costs. Consequently, EUIPO must be ordered to bear its own costs and to pay all the costs incurred by the applicant. The intervener must bear her own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 February 2023 (Case R 268/2022-2);
2. Dismisses the action as to the remainder;
3. Orders EUIPO to bear its own costs and to pay those incurred by Verla-Pharm Arzneimittel GmbH & Co. KG;
4. Orders Ms Valeria Converso to bear her own costs.
Marcoulli | Tomljenović | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 24 April 2024.
V. Di Bucci | | M. van der Woude |