JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
7 November 2019 (*)(1)
(EU trade mark — Opposition proceedings — Application for the EU word mark INTAS — Earlier EU and national figurative trade marks including the word element ‘indas’ — Relative ground for refusal — Likelihood of confusion — Similarity of the signs and of the goods — Article 8(1)(b) of Regulation (EU) 2017/1001 — Proof of genuine use of the earlier marks — Article 47 of Regulation 2017/1001)
In Case T‑380/18,
Intas Pharmaceuticals Ltd, established in Ahmedabad (India), represented by F. Traub, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo 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
Laboratorios Indas, SA, established in Pozuelo de Alarcón (Spain), represented by A. Gómez López, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 April 2018 (Case R 815/2017‑4), relating to opposition proceedings between Laboratorios Indas and Intas Pharmaceuticals,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 25 June 2018,
having regard to the response of EUIPO lodged at the Court Registry on 1 October 2018,
having regard to the response of the intervener lodged at the Court Registry on 5 October 2018,
further to the hearing on 8 May 2019,
gives the following
Judgment
Background to the dispute
1 On 26 May 2015, the applicant, Intas Pharmaceuticals Ltd, 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 INTAS.
3 The goods in respect of which registration was sought are in Classes 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, and correspond, for each of those classes, to the following description:
– Class 5: ‘Prescription-only human or veterinary medicines for parenteral, enteral, rectal, sublingual or oral administration; prescription-only human or veterinary medicines for intravenous or oral administration; prescription-only human or veterinary medicines for topical application’;
– Class 10: ‘Medical or veterinary injection apparatus and instruments; medical or veterinary syringes; syringes pre-filled with prescription-only medicines’.
4 The trade mark application was published in Community Trade Marks Bulletin No 2015/113 of 19 June 2015.
5 On 17 September 2015, the intervener, Laboratorios Indas, SA, 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, inter alia, first, the earlier EU figurative mark which was registered on 17 January 2005 under the number 3380524 and has been renewed until 2 October 2023 and, secondly, the earlier Spanish figurative mark which was registered on 7 October 1994 under the number 2698682(5) and has been renewed until 7 October 2024.
7 The earlier EU trade mark is reproduced below:
8 The goods covered by the earlier EU trade mark are in, inter alia, Class 10 and correspond to the following description: ‘Disposable products for use during medical or surgical procedures, including disposable garments worn by either patients or medical/surgical personnel for protection from contamination or infection; sterile bandages; table covers, towels, surgical drapes designed to protect the operational area of the patient from contamination during surgery, and other disposable surgical components sold individually or in combination as surgical packs designed for various types of surgery’.
9 The earlier national trade mark is reproduced below:
10 The goods covered by the earlier national trade mark are in, inter alia, Class 5 and correspond to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, and for dental wax; disinfectants’.
11 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
12 Following a request made by the applicant and in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), EUIPO invited the intervener to furnish proof of genuine use of the earlier trade marks that had been relied on in support of the opposition. The intervener complied with that request within the time limit set.
13 On 28 March 2017, the Opposition Division upheld the opposition in its entirety.
14 On 24 April 2017, the applicant 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 decision of the Opposition Division.
15 By decision of 16 April 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal in its entirety. In the first place, in paragraphs 16 to 34 of the contested decision, the Board of Appeal assessed whether the intervener had furnished proof of genuine use of the earlier marks. In that regard, first, it found that proof of genuine use of the earlier EU trade mark had been furnished in connection with the goods in Class 10 referred to in paragraph 8 above. Secondly, it took the view that proof of genuine use of the earlier national trade mark had been furnished in connection with ‘gauze dressing’ and ‘pure cotton’ which, used together, corresponded to the ‘materials for dressings’ in Class 5.
16 In the second place, in paragraphs 35 to 52 of the contested decision, the Board of Appeal found that, taking into account the average degree of visual similarity, the high degree of phonetic similarity, the lack of impact of the conceptual comparison of the signs at issue, the normal degree of inherent distinctiveness of the earlier marks and the average degree of similarity between the goods covered by the marks at issue, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to all the goods covered by the mark applied for, even if the relevant public, consisting of the general public and of professionals in the medical field, displayed a high level of attention. Lastly, since the opposition had been upheld on the basis of the grounds laid down in Article 8(1)(b) of Regulation 2017/1001 and on the basis of the inherent distinctiveness of the earlier marks at issue, the Board of Appeal took the view, in paragraph 53 of the contested decision, that there was no need to assess the enhanced distinctiveness of those trade marks and to take into account the other grounds and earlier rights invoked in support of the opposition.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– in the alternative, alter the contested decision to state that the opposition should be remitted to the Opposition Division;
– order EUIPO and the intervener, jointly and severally, to pay the costs incurred in the present action and the costs incurred before the Board of Appeal.
18 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
19 The applicant puts forward a single plea in law which consists, in essence, of two parts. The first part alleges infringement of Article 47 of Regulation 2017/1001, inasmuch as the Board of Appeal erred in finding that proof of genuine use of the earlier trade marks at issue had been furnished. The second part alleges that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
Preliminary observations
20 In the first place, it is important to note that, at the hearing, the applicant withdrew its second head of claim, a fact of which formal note was taken by the Court in the minutes of the hearing.
21 In the second place, it must be pointed out that, when questioned at the hearing, the applicant stated to the Court that, by the letter which it had lodged at the Court Registry on 5 November 2018, it wished solely to inform the Court that a restriction of the goods in Class 5 had been registered by EUIPO, but that that restriction did not have any legal consequences as regards the present proceedings.
22 Accordingly, the Court’s examination will relate to the goods in Class 5 referred to in paragraph 3 above and will not take into account the information, in the letter of 5 November 2018 referred to in paragraph 21 above, that ‘[the goods covered by the mark applied for in that class do not include] inhalation products for the treatment of respiratory diseases’.
Admissibility
The arguments which the applicant put forward at the hearing
23 EUIPO and the intervener submit that three arguments which the applicant put forward at the hearing are inadmissible on the ground that those arguments were not put forward in the application.
24 The arguments which the applicant put forward at the hearing are summarised below.
25 First, the applicant submits that the Board of Appeal did not take into account the fact that the evidence provided by the intervener showed use of the sign INDAS as the intervener’s business name and not as a mark to designate goods. Secondly, the applicant maintains that the Board of Appeal did not assess whether the proof of use of the earlier marks in different forms which did not alter their distinctive character concerned the goods in respect of which the earlier marks were registered. Thirdly, the applicant claims that the Board of Appeal erred in taking into account evidence in respect of which the intervener had not provided a translation into English.
26 It must be borne in mind that, under Article 84(1) of the Rules of Procedure of the General Court, no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure or amplifies a plea put forward previously, directly or by implication, in the application initiating proceedings, and is closely connected with that plea (judgment of 16 February 2017, Antrax It v EUIPO — Vasco Group (Thermosiphons for radiators for heating), T‑828/14 and T‑829/14, EU:T:2017:87, paragraph 24 and the case-law cited).
27 In reply to a question put by the Court at the hearing, the applicant maintained that the arguments the admissibility of which is disputed constituted a development of the arguments that it had set out in paragraphs 15, 16 and 17 of the application.
28 In that regard, it is important to point out that, in paragraphs 15, 16 and 17 of the application, the applicant submits that the Board of Appeal assessed the evidence without ascertaining that the items of information about the place, time, nature and extent of use of the earlier marks contained in that evidence complemented one another. Consequently, although the first two arguments may be interpreted as being a development of those paragraphs of the application, by contrast, the third argument, which seeks to challenge the lack of a translation of the evidence into English cannot be considered, as the applicant claimed at the hearing, to be implicitly contained in the statement that the evidence is not ‘solid and objective’ (see paragraph 15 of the application).
29 As regards the possibility of the applicant taking the view that all the arguments in question may be inferred from the reference, made in paragraph 16 of the application, to its observations before EUIPO of 23 August 2016, it must be stated that it made that reference for the purpose of showing, again, that there is no link between the items of information concerning the place, time, nature and extent of use of the earlier marks contained in the evidence, but not of challenging the lack of a translation of the evidence into English.
30 Moreover, under Article 177 of the Rules of Procedure, an application initiating proceedings must contain the pleas in law and arguments relied on and a summary of those pleas in law. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see judgment of 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 14 and the case-law cited).
31 The case-law has also made it clear that the Court cannot take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgment of 11 June 2014, METABIOMAX, T‑281/13, not published, EU:T:2014:440, paragraph 15 and the case-law cited).
32 In the present case, since the third argument referred to in paragraph 25 above cannot be related to the arguments put forward in the application, that argument must be declared inadmissible.
33 It is therefore in the light of the arguments put forward in the application as developed at the hearing by the first two arguments referred to in paragraph 25 above that the legality of the contested decision will be examined.
The pleas of inadmissibility put forward by the intervener
34 The intervener contends that the applicant’s complaints seeking to challenge the proof of genuine use of the earlier trade marks and the conceptual comparison of the signs at issue are inadmissible. According to the intervener, the legal and factual issues raised by those complaints were already definitively dealt with in a decision which the Opposition Division adopted on 16 March 2017 in different opposition proceedings between the same parties, regarding signs that are identical to those at issue in the present case and goods covered by the mark applied for that are different from those at issue in the present case (Cases R 816/2017‑4 and R 1031/2017‑4) (‘the decision of 16 March 2017’). It submits that the decision of 16 March 2017 was challenged by the applicant and by the intervener before the same Board of Appeal as that which adopted the contested decision in the present case. It maintains that that Board of Appeal, which was called upon to rule on the issues of proof of genuine use of the earlier marks in question and the conceptual similarity of the signs at issue, confirmed the Opposition Division’s findings in the decision of 16 March 2017. It takes the view that, consequently, since the Board of Appeal’s decision as regards those issues was not challenged before the Court, the findings contained in the decision of 16 March 2017 have become final. More specifically, the intervener contends that, since it does not take any new factors into account or contain a re-examination of the parties’ situation, the contested decision in the present case is a mere confirmation of the decision of 16 March 2017 because the Board of Appeal expressly referred to the analysis of those issues that had been carried out in the context of the earlier opposition proceedings between the same parties. The intervener maintains that, consequently, in seeking the annulment of the contested decision in the present case, the applicant is ‘de facto’ seeking the annulment of the decision of 16 March 2017. Lastly, the intervener submits that, if the Court were not to hold the complaints in question to be inadmissible, that would run counter to the principles of res judicata and ne bis in idem and would create a situation of uncertainty regarding its exclusive rights, contrary to its legitimate expectations and to the principle of legal certainty.
35 First, it is important to bear in mind that the principle of res judicata, which prohibits a final judicial decision being called into question, is not applicable so far as concerns the relationship between a decision of an Opposition Division and an opposition brought subsequently in different proceedings, given, inter alia, that proceedings before EUIPO are administrative and not judicial (see judgment of 8 December 2015, Giand v OHIM — Flamagas (FLAMINAIRE), T‑583/14, not published, EU:T:2015:943, paragraph 21 and the case-law cited). A fortiori, the grounds of a decision given by an Opposition Division in different opposition proceedings do not have the force of res judicata. Those grounds are not capable of creating acquired rights or legitimate expectations with regard to the parties concerned.
36 Consequently, the intervener cannot maintain that the rejection of its pleas of inadmissibility would create a situation of uncertainty regarding its exclusive rights, contrary to its legitimate expectations and to the principle of legal certainty.
37 Secondly, the principle of ne bis in idem, which prohibits the same person from being penalised more than once for the same unlawful conduct in order to protect one and the same legal interest, constitutes a general principle of EU law, the observance of which the Courts ensure. However, that principle is applicable only to penalties, which is not the case as regards decisions given by EUIPO in the context of opposition proceedings (see judgment of 8 December 2015, FLAMINAIRE, T‑583/14, not published, EU:T:2015:943, paragraph 19 and the case-law cited). Consequently, reliance on that principle is, in the present case, ineffective.
38 Thirdly, it is important to point out that a decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. In order to prevent the time limit for bringing an action against the earlier decision to recommence, an action against such a confirmatory decision must be declared inadmissible. Thus, where the contested measure is merely confirmatory of an earlier measure, an action is admissible only if the measure confirmed has been challenged within the procedural time limits (see order of 13 July 2017, myToys.de v EUIPO — Laboratorios Indas (myBaby), T‑519/15, not published, EU:T:2017:502, paragraph 38 and the case-law cited).
39 A decision is regarded as a mere confirmation of an earlier decision if it contains no new factors as compared with that earlier decision and if it was not preceded by any re-examination of the situation of the addressee of that earlier decision (see order of 13 July 2017, myBaby, T‑519/15, not published, EU:T:2017:502, paragraph 39 and the case-law cited).
40 In that regard, a decision of a Board of Appeal, even if it contains findings identical to those in an earlier decision adopted by an Opposition Division in different opposition proceedings, is the result of a re-examination of the legal and factual issues which have been submitted to it. It is true that that re-examination may lead to a result which is identical to that obtained previously before the Opposition Division in different proceedings between the same parties regarding signs that are identical to those at issue in subsequent proceedings before EUIPO. However, that identical outcome adopted by two different adjudicating bodies of EUIPO in different opposition proceedings does not, for that reason alone, imply that a decision given by a Board of Appeal is confirmatory of that previously given by an Opposition Division in different proceedings.
41 That is a fortiori the case when one considers that the proof of genuine use of the earlier marks is capable of varying over time and can never be regarded as having been definitively furnished in the context of opposition proceedings that are different from those in which it has been requested. Likewise, since the comparison of the signs at issue is capable of varying depending on the relevant public and is also capable of varying over time, such a comparison cannot be regarded as having been definitively dealt with by an earlier decision of EUIPO which has not been challenged before the Court.
42 It follows that the contested decision, in so far as it concerns the issues of proof of genuine use of the earlier marks and the conceptual similarity of the signs at issue, cannot be regarded as ‘confirmatory’ of a decision adopted by an Opposition Division in the context of different opposition proceedings concerning the same parties and the same trade marks.
43 In the light of the foregoing, the pleas of inadmissibility put forward by the intervener cannot succeed and must be rejected.
Substance
Proof of genuine use of the earlier marks
44 The first part of the single plea in law put forward by the applicant alleges infringement of Article 47 of Regulation 2017/1001 and seeks to challenge the proof of genuine use of the earlier marks. That first part consists, in essence, of three complaints. The first complaint alleges that the Board of Appeal misapplied Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)). The second complaint alleges that the Board of Appeal misinterpreted and misapplied the case-law of the Courts of the European Union, which has established the criteria that make it possible to assess whether an EU trade mark has been put to genuine use. The third complaint alleges that the Board of Appeal incorrectly widened the category of goods in connection with which proof of genuine use of the earlier national mark might have been furnished.
45 EUIPO and the intervener dispute the complaints put forward by the applicant.
46 It must be borne in mind that it is clear from recital 24 of Regulation 2017/1001 that the legislature considered that there is no justification for protecting an earlier trade mark, except where the mark is actually used. In keeping with that recital, Article 47(2) and (3) of Regulation 2017/1001 provides that, if the applicant for registration so requests, the proprietor of an earlier national or EU trade mark who has given notice of opposition is required to furnish proof that, during the 5-year period immediately preceding the date of publication of the application, that trade mark 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 which he cites as justification for his opposition, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than 5 years. In the absence of proof to that effect, the opposition is to be rejected. If the earlier mark has been used only in relation to part of the goods or services for which it is registered, it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
47 Moreover, it should be stated that, pursuant to point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 in conjunction with Article 47(2) and (3) of that regulation, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (see judgment of 8 December 2005, Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
48 The distinctive character of a mark within the meaning of Regulation 2017/1001 means that that mark makes it possible to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 26 and the case-law cited).
49 Furthermore Rule 22(1) of Regulation No 2868/95 provides that, if the opposing party does not provide proof of use of the earlier mark or show that there are proper reasons for non-use within the period specified by EUIPO, EUIPO must reject the opposition. According to Rule 22(2) of that regulation, proof of use must relate to the place, time, extent and nature of use of the earlier mark for the goods or services in respect of which it is registered and on which the opposition is based. Rule 22(3) provides that the evidence of use is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and to statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001). Lastly, under Rule 22(4), where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, EUIPO may require the opposing party to submit a translation of that evidence in that language, within a period specified by EUIPO.
50 The ratio legis for the requirement that a mark must have been put to genuine use in order to be protected under EU law is that EUIPO’s register cannot be regarded as a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, and in accordance with recital 24 of Regulation 2017/1001, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 2 February 2016, Benelli Q. J. v OHIM — Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 67 and the case-law cited).
51 In interpreting the concept of genuine use, account must be taken of the fact that the ratio legis for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from an actual function of the mark on the market. However, the purpose of that provision 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 (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 28 and the case-law cited).
52 As is apparent from paragraph 43 of the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), 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. In addition, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 29 and the case-law cited).
53 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 use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
54 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (see judgment of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 31 and the case-law cited).
55 In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of that case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa. Furthermore, the turnover and the volume of sales of 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 business, production or marketing capacity 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, the Courts of the European Union have stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be classified as genuine, provided that it is regarded as warranted, in the relevant economic sector, as a means of maintaining or creating market shares for the goods or services protected by the mark (see judgment of 10 September 2008, CAPIO, T‑325/06, not published, EU:T:2008:338, paragraph 32 and the case-law cited).
56 The Court of Justice has also added that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, so that a de minimis rule, which would not allow EUIPO or, following the bringing of an action, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, the Court of Justice has held that, when it serves a real commercial purpose, even minimal use of the trade mark may be sufficient to establish genuine use (see judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72 and the case-law cited).
57 The General Court has stated that genuine use of a trade mark cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned. However, it cannot be ruled out that an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, considered in isolation, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 25 October 2013, Biotronik SE v OHIM — Cardios Sistemas (CARDIO MANAGER), T‑416/11, not published, EU:T:2013:559, paragraph 33 and the case-law cited).
58 It is in the light of those considerations and of the complaints which have been put forward by the applicant and referred to in paragraph 44 above, that it must be examined whether the Board of Appeal was right in finding, in paragraph 34 of the contested decision, that the earlier marks had been put to genuine use, for the purposes of Article 47(2) and (3) of Regulation 2017/1001, in connection with the goods referred to in paragraph 15 above.
– Whether there has been infringement of Rule 22 of Regulation No 2868/95
59 The applicant complains that the Board of Appeal misapplied Rule 22 of Regulation No 2868/95. The applicant submits that the Board of Appeal assessed the items of evidence of use of the earlier trade marks separately, without ascertaining that the items of information about the place, time, nature and extent of use of those marks contained in that evidence complemented one another.
60 In the present case, the intervener produced, before the Opposition Division, numerous items of evidence, the content of which is summarised over approximately three pages in paragraph 5 of the contested decision. As is apparent from paragraphs 20 to 34 of the contested decision, the items of evidence of genuine use of the earlier marks that the Board of Appeal took into account are, inter alia, the following:
– a sworn statement by the intervener’s legal representative and finance director certifying the sales turnover of goods sold ‘under the trade mark “INDAS”’, specified by product and sector;
– product catalogues, product packaging and website printouts about the goods marketed by the intervener ‘under its trade marks’, mentioning, inter alia, signs that are identical or similar to the earlier marks and include the word element ‘indas’. Some of those items of evidence are dated 2009, 2012, 2014 and 2015. Signs similar to the earlier marks, in colour variations, are shown on the first or on the back page of the catalogues and the presentation of the products shows figurative signs including the following word elements: ‘incopack’, ‘indasec’, ‘indaslip’, ‘indaform’ and ‘sabanindas’;
– price lists for the intervener’s goods, which are dated 1 January 2015 and mention, inter alia, the trade mark INDAS for part of the goods. A sign that is similar to the earlier marks, the intervener’s name and the information ‘lista de precios — división hospital — valida desde 1 de Enero de 2015’ (price list [for the] hospital department[,] valid as from 1 January 2015) appear at the top of those lists;
– advertising material and pictures from events sponsored by the intervener. Some of the documents depict signs similar to the earlier marks and also depict the intervener’s figurative signs, each of which consists of one of the word elements ‘indasec’, ‘cicactiv’, ‘convertia’, and so forth;
– press advertisements and lists of prizes awarded to the intervener, dated between 2003 and 2014;
– invoices at the top of which the mark INDAS is depicted, which pertain to sales of goods, some of them under the trade mark INDAS, and mention dates in the period from 2010 to 2015. Signs that are identical to the earlier marks and the business name of the intervener appear at the top of each invoice.
61 It is important to note at the outset that the EU trade mark application filed by the applicant was published on 19 June 2015. Consequently, as the Board of Appeal correctly found in paragraph 17 of the contested decision, the 5-year period referred to in Article 47(2) of Regulation 2017/1001 (see paragraph 46 above) ran from 19 June 2010 to 18 June 2015 (‘the relevant period’).
62 Moreover, it must be borne in mind that, according to the case-law, although Rule 22 of Regulation No 2868/95 refers to indications concerning the place, time, extent and nature of use and gives examples of acceptable evidence, such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing, that rule does not state that each piece of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use (judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products), T‑308/06, EU:T:2011:675, paragraph 61).
63 In the present case, it must be pointed out that, as regards the time and place of use, the Board of Appeal, in paragraphs 20 and 21 of the contested decision, took into account, together, a number of items of evidence provided by the intervener, namely, first, the invoices issued in Spain in the period from 2010 to 2015 and addressed to various customers, including pharmacies located in different Spanish cities in the areas of Madrid, Seville, Barcelona, Valencia, Ciudad Real, Granada, Malaga, Tenerife, Albacete and so forth, secondly, the catalogues in Spanish relating to the years 2012, 2014 and 2015, thirdly, the price lists in Spanish from 2015 and, fourthly, the advertisements which featured in the Spanish press in 2014.
64 As regards the nature of use of the earlier marks, first of all, in paragraph 26 of the contested decision, the Board of Appeal stated that the huge amount of evidence provided by the intervener demonstrated that the mark INDAS had been used by the opponent not only as a trade mark, but also as a company or trade name to designate its group which specialises in producing and distributing various hygienic and sanitary products. It stated that the majority of the goods in question were distributed under different marks, such as INCOPACK, INDASEC, SABANINDAS, CICACTIV, and so forth. However, it pointed out that some of the goods were specifically marketed under the mark INDAS. Next, in paragraph 27 of the contested decision, the Board of Appeal stated that the trade mark INDAS, as an indication of the commercial origin of the goods, had been affixed to the product packaging depicted in the catalogues and advertising, that that mark appeared in press articles and on websites and that it was referred to on the invoices and in the price lists provided by the intervener. Lastly, in paragraphs 28 and 29 of the contested decision, the Board of Appeal found that the evidence showed use of the earlier marks both in the forms in which they were registered and in various forms of those marks which did not alter their distinctive character.
65 As regards the goods sold under the earlier marks at issue, the Board of Appeal found, in paragraphs 30 and 31 of the contested decision, that the affidavit of the intervener’s legal representative, in conjunction with the invoices, the price lists and the product catalogues and packaging samples, indicated use of the earlier marks, both in the form as registered and in forms which did not alter their distinctive character, first, in connection with various types of ‘gauze dressings’ and ‘pure cotton’ and, secondly, in connection with ‘medical/surgical instruments’, ‘clothing’ and ‘dressings’. It stated, in particular, that the samples of product packaging showed the variant, in blue and white, of the earlier marks next to the sign CONVERTIA on packs containing various items, such as ‘protective clothing, cloths, trays, pins, gauzes, compresses, towels, swabs, scalpels, syringes, needles, table covers, gloves, sponges, etc.’. It added that the abbreviations used in the invoices corresponded to the full titles visible in the price lists and on the product packaging. Furthermore, the Board of Appeal found, in paragraph 32 of the contested decision, that the affidavit, the invoices, the advertisements and the product catalogues indicated use of the mark INDAS, or its variant in blue and white, in connection with ‘wipes for hand cleaning’ and ‘bed protectors’. The Board of Appeal stated that the mark INDAS was sporadically seen on the packaging of ‘baby wipes, ankle and elbow protectors, geriatric bibs’, and so forth.
66 Lastly, as regards the extent of use of the earlier marks, the Board of Appeal found, in paragraph 33 of the contested decision, that the extent of use had been proved on the basis of the affidavit of the intervener’s legal representative and the invoices, which disclosed a high volume of sales of goods covered by those marks.
67 The examination of the evidence which was taken into account by the Board of Appeal and has been sent to the Court, makes it possible to make the following observations.
68 First, the goods which are referred to in paragraph 15 above and are covered by the earlier marks appear to be depicted, under the trade mark INDAS, in catalogues in which the codes assigned to those products are also shown. Secondly, the identification codes for the goods covered by the earlier marks and the full titles of those goods appear in the price lists. Thirdly, both the identification codes for the goods covered by the two earlier marks and the abbreviations used to identify those goods appear in the invoices which prove that the goods at issue were sold, during the relevant period, to pharmacies and hospitals located in Spain. Fourthly, those codes and abbreviations for the goods at issue appear in the table that is attached to the affidavit which certifies the intervener’s sales turnover in respect of goods covered by the trade mark INDAS and proves the extent of use of that mark.
69 Since the abbreviations for the goods covered by the earlier marks which are used on the invoices and in the table attached to the affidavit certifying the sales turnover in respect of goods under the mark INDAS correspond to the full titles that are visible in the price lists and on the product packaging represented in the product catalogues, the applicant cannot maintain that the items of evidence provided by the intervener did not complement one another to prove the place, time, nature and extent of use of the earlier marks at issue.
70 It follows that the Board of Appeal, first of all, correctly determined, on the basis of the invoices, price lists, catalogues and advertisements, that the earlier marks at issue had been used in Spain during the relevant period. Next, contrary to what the applicant maintained at the hearing (see paragraph 25 above), first, the Board of Appeal correctly found, on the basis of all the evidence mentioned in paragraph 60 above, that the trade mark INDAS had been used both as the intervener’s company name and as a trade mark in the form as registered or in forms which did not alter the distinctive character. Secondly, the Board of Appeal correctly took into account the affidavit of the intervener’s legal representative, the invoices, the price lists and the product catalogues and packaging samples in order to find that the intervener had furnished proof of genuine use of its trade marks in connection with the goods referred to in paragraph 15 above. In paragraph 31 of the contested decision, the Board of Appeal correctly stated that ‘the abbreviations used in the invoices correspond[ed] to the full titles visible in the price lists and on the product packaging’. Lastly, the Board of Appeal did not make an error of assessment in relying on the affidavit of the intervener’s legal representative and the invoices in order to find that the extent of use of the trade mark INDAS had been proved in present case.
71 Contrary to what the applicant submits, it is apparent from paragraphs 20 to 33 of the contested decision, the content of which is referred to in paragraphs 63 to 66 above, that the Board of Appeal did not take each item of evidence into account in isolation, without ascertaining whether the goods covered by the earlier marks had been sold under those marks during the relevant period in the relevant territory. The Board of Appeal’s analysis is, at each stage of that analysis, based on a number of items of evidence considered as a whole and on an overall assessment of those items of evidence. As the intervener correctly submits, although some items of evidence, considered in isolation, do not prove genuine use of the earlier marks at issue, each item of evidence, examined together with the other items of evidence, contributes towards proving such use. Consequently, it must be held that, in accordance with the provisions of Rule 22 of Regulation No 2868/95, as interpreted by the case-law, the Board of Appeal carried out an overall assessment of the evidence referred to in paragraph 60 above and ascertained whether that evidence contained indications concerning the place, time, extent and nature of use of the earlier marks in connection with the goods referred to in paragraph 15 above.
72 The applicant’s first complaint, which is referred to in paragraph 44 above, must therefore be rejected.
– Whether the use of the earlier EU trade mark is genuine
73 The applicant submits that the Board of Appeal erred in finding that the use of the earlier EU trade mark in Spain was sufficient to prove that that the use of that mark within the European Union was genuine. According to the applicant, it is apparent from the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), that an earlier EU trade mark must be used in a larger area than the territory of a single Member State in order for its use to be regarded as genuine and that it is only in certain specific circumstances that use in a single Member State is sufficient to prove that the use of that mark within the European Union is genuine.
74 In that regard, it is important to point out that, in the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), which the applicant refers to, the Court of Justice held, first, with regard to Article 47(2) and (3) of Regulation 2017/1001, that it was apparent from the case-law that the expression ‘use in [the Union]’ has to be interpreted as meaning that the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors, and that the phrase ‘in [the Union]’ is intended to define the geographical market serving as the reference point for all consideration of whether an EU trade mark has been put to ‘genuine use’. Secondly, the Court of Justice held that the phrase ‘genuine use in [the Union]’, for the purposes of Article 18(1) of Regulation 2017/1001, means that use of the EU trade mark in third States cannot be taken into account (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 36 to 38 and the first point of the operative part).
75 Furthermore, the Court of Justice stated that Regulation 2017/1001 pursues the objective of removing the barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States by enabling undertakings to adapt their activities to the scale of the European Union and carry them out without restriction. According to the Court of Justice, the EU trade mark enables its proprietor to distinguish his goods and services by identical means throughout the entire European Union, regardless of frontiers. On the other hand, undertakings which do not wish to protect their trade marks at European Union level may choose to use national trade marks and are not obliged to apply for registration of their marks as EU trade marks. The Court of Justice pointed out that the unitary character of the EU trade mark means that it enjoys uniform protection throughout the entire area of the European Union, in the sense that an EU trade mark may not, in principle, be registered, transferred or surrendered or be the subject of a decision revoking the rights of its proprietor or declaring it invalid and its use may not be prohibited, save in respect of the whole of the European Union. Consequently, according to the Court of Justice, to give, in the framework of the EU arrangements for trade marks, particular significance to the territories of the Member States would frustrate the abovementioned objective and would be detrimental to the unitary character of the EU trade mark. The Court of Justice concluded that the territorial borders of the Member States should be disregarded in assessing whether there is ‘genuine use in [the Union]’ (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 39 to 42 and 44).
76 By contrast, the Court of Justice expressly rejected, first, the submission before it that the territorial scope of the use of an EU trade mark cannot under any circumstances be limited to the territory of a single Member State (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 49) and, secondly, the submission that, even if the borders of the Member States within the internal market are disregarded, the condition of genuine use of an EU trade mark requires that the trade mark should be used in a substantial part of the European Union, which may correspond to the territory of a Member State (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraphs 52 and 53).
77 In that regard, it stated that, whilst it is reasonable to expect that an EU trade mark should be put to use in a larger area than the territory of a single Member State in order for that use to be capable of being deemed to be ‘genuine use’, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 54).
78 According to the Court of Justice, 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. The Court of Justice stated that, in such a case, use of the EU trade mark on that territory might satisfy the conditions both for genuine use of an EU trade mark and for genuine use of a national trade mark (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 50).
79 Consequently, contrary to what the applicant submits, when the Court of Justice, in paragraph 50 of the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), used the expression ‘in certain circumstances’, it was not seeking to establish that acknowledging that the use of an EU trade mark that had been used in a single Member State was genuine constituted an exception to a general principle. The Court of Justice also referred to the conditions laid down by settled case-law for assessing whether the use of a mark is genuine, namely all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered. The Court stated that it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of an EU trade mark is genuine or not and that a de minimis rule cannot therefore be laid down (see judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55 and the case-law cited). According to the Court of Justice, an EU trade mark is put to genuine use where it is used in accordance with its essential function and for the purpose of maintaining or creating market shares in the European Union for the goods or services covered by that mark. Consequently, when assessing genuine use, it is necessary to take into account the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 56).
80 It is apparent from the foregoing, first, that the territorial scope is only one of several factors that have to be taken into account in assessing whether use of an EU trade mark is genuine and, secondly, that a de minimis rule for establishing whether that factor is satisfied cannot be laid down. It is not necessary that an EU trade mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the goods or services concerned on the corresponding market and, more generally, on all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered (see, to that effect, judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 55). Moreover, for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. Furthermore, the possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account.
81 In accordance with the principles laid down by the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816), the General Court has held on numerous occasions that use of an EU trade mark in a single Member State (for example, in Germany, in Spain, or in the United Kingdom), or even in a single city in a Member State of the European Union, like the United Kingdom (for example, in London), is sufficient to satisfy the criterion of territorial scope (see, to that effect, judgments of 30 January 2015, Now Wireless v OHIM — Starbucks (HK) (now), T‑278/13, not published, EU:T:2015:57, paragraphs 52 and 53; of 15 July 2015, TVR Automotive v OHIM — TVR Italia (TVR ITALIA), T‑398/13, EU:T:2015:503, paragraph 57; of 9 November 2016, Gallardo Blanco v EUIPO — Expasa Agricultura y Ganadería (Representation of a branding iron (shape of an H-shaped horse bit)), T‑716/15, not published, EU:T:2016:649, paragraphs 41 to 44; of 30 November 2016, K&K Group v EUIPO — Pret a Manger (Europe) (Pret A Diner), T‑2/16, not published, EU:T:2016:690, paragraph 50; of 28 June 2017, Tayto Group v EUIPO — MIP Metro (real), T‑287/15, not published, EU:T:2017:443, paragraph 59; of 15 November 2018, DRH Licensing & Managing v EUIPO — Merck (Flexagil), T‑831/17, not published, EU:T:2018:791, paragraph 67; and of 6 March 2019, Serenity Pharmaceuticals v EUIPO — Gebro Holding (NOCUVANT), T‑321/18, not published, EU:T:2019:139, paragraphs 43 to 45).
82 In other words, as Advocate General Sharpston stated in the Opinion she gave in Leno Merken (C‑149/11, EU:C:2012:422), whether an EU trade mark has been used in one Member State or several is irrelevant. What matters is the impact of the use in the internal market: more specifically, whether it is sufficient to maintain or create market share in that market for the goods and services covered by the mark and whether it contributes to a commercially relevant presence of the goods and services in that market. Whether that use results in actual commercial success is not relevant (Opinion of Advocate General Sharpston in Leno Merken, C‑149/11, EU:C:2012:422, point 50).
83 In the present case, having regard, first, to the considerable number of items of evidence provided by the intervener, secondly, to the duration and frequency of use shown by those documents, thirdly, to the characteristics of the goods in connection with which that use has been proved and to the normal distribution channels, namely that they are goods relating to the health sector which are provided, in particular, by pharmacies and hospitals, and, fourthly, to the extent of that use both in terms of the volume of sales and turnover, it must be held, in the light of the principles laid down in the judgment of 19 December 2012, Leno Merken (C‑149/11, EU:C:2012:816) and summarised in paragraph 80 above, that the Board of Appeal did not make an error of assessment when it found, in paragraph 22 of the contested decision, that the intervener had proved use of the mark INDAS in Spain and that, since the borders of the Member States had to be disregarded, that use was sufficient to prove use in the European Union.
84 It must be held that use of an earlier EU trade mark in one Member State is capable of producing effects on the internal market by, for example, ensuring that the goods are known — in a commercially relevant manner — by participants in a market that is larger than that corresponding to the territory where the mark is used (Opinion of Advocate General Sharpston in Leno Merken, C‑149/11, EU:C:2012:422, point 54).
85 All the evidence provided by the intervener shows use that is sufficient to maintain or create market share in the market concerned and to contribute to a commercially relevant presence of the goods in Class 10 which have been referred to in paragraph 15 above and are covered by the earlier EU trade mark. As a result, the Board of Appeal also did not make an error of assessment in finding, in paragraph 34 of the contested decision, that genuine use of that mark had been proved in connection with those goods.
86 The applicant’s second complaint, which has been referred to in paragraph 44 above, must therefore be rejected.
– Proof of genuine use of the earlier national trade mark in connection with ‘materials for dressings’
87 The applicant submits that the Board of Appeal erred in finding that it was possible to conclude from any proof of genuine use of the earlier national trade mark in connection with ‘gauze dressings’ and ‘pure cotton’ that that mark had been used in connection with ‘materials for dressings’. It submits that ‘cotton wool’ is not appropriate for the dressing of wounds and that, since ‘cotton wool’ and ‘gauze dressings’ consist of different materials, they cannot be included together in the same false generic category of goods. It maintains that ‘cotton wool’, which is not, moreover, included in the list of goods covered by the earlier national trade mark, cannot be regarded as being included in the ‘materials for dressings’ covered by that trade mark. The applicant concludes that the categorisation by the Board of Appeal of the goods covered by the earlier national trade mark as ‘materials for dressings’ wrongly expands the range of goods in respect of which that earlier national trade mark has been registered.
88 In the present case, it is common ground that the earlier national mark was registered in respect of, inter alia, goods in Class 5, namely ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, and for dental wax; disinfectants’. It is also not disputed that, following the applicant’s request before EUIPO, the intervener furnished proof of genuine use of the earlier national mark in connection with the goods ‘gauze dressings’ and ‘pure cotton’.
89 Article 47(2) and (3) of Regulation 2017/1001 provides that, if the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it must, for the purposes of the opposition, be deemed to be registered in respect only of that part of the goods or services.
90 The objective pursued by that provision is to determine precisely the extent of the protection afforded to the earlier trade mark by reference to the goods or services in relation to which it was actually used at a given time. In other words, Article 47(2) and (3) of Regulation 2017/1001 seeks to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, when those provisions are applied, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (see judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288, paragraph 44).
91 According to the case-law, it follows from the abovementioned provisions that, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 45).
92 It has also been held that, although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is in practice impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 46).
93 Furthermore, it is apparent from the same case-law that the provisions of Article 47 of Regulation 2017/1001 allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his registration and (ii) must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him. That is particularly so when the goods in relation to which use of the mark has been proved form a sufficiently specific and narrowly defined category (judgment of 14 July 2005, ALADIN, T‑126/03, EU:T:2005:288, paragraph 51).
94 As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case-law that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose or intended use of the goods or services in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a subcategory of goods or services. By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services (see judgment of 18 October 2016, August Storck v EUIPO — Chiquita Brands (Fruitfuls), T‑367/14, not published, EU:T:2016:615, paragraph 32 and the case-law cited).
95 It is on the basis of those considerations that it must be examined whether the Board of Appeal was right in finding, in paragraph 34 of the contested decision, that genuine use of the earlier national mark had been proved in connection with ‘materials for dressings’ and that it was not possible to make a significant sub-division within the category concerned.
96 First, as regards the applicant’s reference to the classification tool for goods and services ‘TMclass’, it should be noted that, as is, moreover, indicated in the specifications for that tool, it is not part of the Nice classification system and has no legal effect on trade mark examination or the comparison of goods and services. Furthermore, it should be noted that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category, as is apparent, in particular, from the second sentence of Rule 2(4) of Regulation No 2868/95 (now Article 33(7) of Regulation 2017/1001) (see, to that effect, judgment of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44 and the case-law cited).
97 Secondly, it is important to point out that, as the Board of Appeal correctly states in paragraph 34 of the contested decision, ‘gauzes’ are used together with ‘cotton’ to make dressings. As EUIPO correctly submits, cotton wool is known for its high absorption capacity. Consequently, wound dressings may include a body of cotton wool in order to absorb the wound exudate, plus a covering layer in another kind of fabric without loose fibres. Furthermore, as EUIPO correctly states, it is possible to obtain wound dressings by putting together ‘gauzes’ and ‘cotton’ or by turning to companies, like the intervener, that produce wound dressings as finished goods.
98 Accordingly, the Board of Appeal did not make an error of assessment in finding that ‘gauze dressings’ and ‘pure cotton’ could not be considered to be different and independent sub-categories in relation to the category ‘materials for dressings’, which was already defined in a sufficiently precise and narrow manner.
99 As regards the applicant’s argument that the categorisation as ‘materials for dressings’ of the goods in connection with which proof of use of the earlier national mark has been furnished entails the risk of encompassing a large number of other separately identifiable sub-categories of goods in Class 5, such as ‘plasters’, ‘adhesive dressings’, ‘bandages’ and ‘burn dressings’, it must be pointed out that those goods all fall within the category of ‘materials for dressings’ on the ground that they have the same purpose. Furthermore, first, it is apparent from the evidence that the sign INDAS together with the mark CONVERTIA has been used in connection with packs containing ‘adhesive dressings’ as well as ‘bandages’. Secondly, account must, in accordance with the case-law referred to in paragraph 93 above, be taken of the legitimate interest of the proprietor of the earlier mark in being able in the future to extend his range of goods, within the confines of the terms describing the goods for which the sign INDAS has been registered. Consequently, the intervener cannot be requested to furnish proof of use of its mark for each type of dressing. It must therefore be held that the goods referred to by the applicant are part of the goods covered by the earlier national mark.
100 The third complaint in the first part of the single plea in law, which has been referred to in paragraph 44 above, must therefore be rejected and the first part of the single plea in law must be rejected in its entirety.
Whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001
101 The second part of the single plea in law put forward the applicant, by which it seeks to dispute the Board of Appeal’s assessments as regards the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, consists, in essence, of four complaints. First, the applicant disputes the Board of Appeal’s definition of the relevant public. Secondly, it disputes the Board of Appeal’s assessments relating to the phonetic and conceptual comparison of the signs at issue. Thirdly, it disputes the Board of Appeal’s assessments regarding the comparison of the goods at issue in the present case. Fourthly, it disputes the Board of Appeal’s assessments relating to the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
102 EUIPO and the intervener dispute the applicant’s arguments.
103 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.
104 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).
105 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 45).
106 Lastly, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see judgment 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 76 and the case-law cited).
107 It is in the light of those considerations and the complaints put forward by the applicant, which have been referred to in paragraph 101 above, that it must be assessed whether the Board of Appeal was right in finding that, as regards the signs at issue, there was, on the part of the relevant public, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
108 It should be noted at the outset, in the first place, that, in view of the evidence of genuine use of the earlier marks provided by the intervener, the Board of Appeal was right in finding, in paragraph 34 of the contested decision, first, that the earlier EU trade mark had to be deemed to be protected in respect of ‘disposable products for use during medical or surgical procedures, including disposable garments worn by either patients or medical/surgical personnel for protection from contamination or infection; sterile bandages; table covers, towels, surgical drapes designed to protect the operational area of the patient from contamination during surgery, and other disposable surgical components sold individually or in combination as surgical packs designed for various types of surgery’ in Class 10 and, secondly, that the earlier national mark had to be deemed to be protected in respect of ‘gauze dressings’ and ‘pure cotton’, which, as they were used together, corresponded to ‘materials for dressings’ in Class 5 (see paragraphs 67 to 72, 85 and 98 above).
109 In the second place, it is important to note that the Board of Appeal defined, in paragraph 36 of the contested decision, the relevant territory for the purpose of assessing the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, as that of the European Union and all its Members States, including Spain. The applicant has not disputed that assessment which is, in any event, correct.
– The relevant public
110 The applicant maintains that ‘the relevant publics’ for the goods covered by the signs at issue ‘are entirely different’. In that regard, it submits that the relevant public for ‘materials for dressings’ is the general public at large. It argues that ‘materials for dressings’ can be purchased not only from a pharmacist, but also in a supermarket, and that there are no restrictions upon who may purchase them. By contrast, it submits that the goods covered by the mark applied for may only be sold to a person with a prescription that has been obtained following a medical consultation. Furthermore, it maintains that the goods covered by the mark applied for are only supplied by a qualified pharmacist who checks whether it is possible to sell the goods in question to the person who wishes to purchase them.
111 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).
112 As is apparent from paragraphs 44, 45 and 50 of the contested decision, the Board of Appeal found that the relevant public consisted of the general public and of professionals in the medical field.
113 It has already been held that, where the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as end consumers of those goods, on the other (see judgment of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 27 and the case-law cited).
114 In the present case, first, the applicant cannot maintain that the ‘materials for dressings’ covered by the earlier national mark are aimed solely at the general public. As is apparent from the invoices provided by the intervener, ‘materials for dressings’ are bought and used not only by the consumers of which the general public consists, but also by pharmacies, health centres and hospitals, that is to say by professionals in the medical sector.
115 Secondly, the applicant cannot maintain that the prescription-only medicines covered by the mark applied for are not aimed at the general public, namely at a public that is identical to that likely to purchase the goods covered by the earlier marks. The requirement to have a prescription in order to purchase the goods covered by the mark applied for does not preclude the same consumer from being able to purchase, without a prescription, goods covered by the earlier marks. In other words, the requirement to have a prescription does not, in the present case, have any bearing on the finding that the relevant publics in respect of the goods concerned covered by the signs at issue coincide.
116 Consequently, the Board of Appeal did not make an error of assessment in finding, in paragraphs 44, 45 and 50 of the contested decision, that the relevant public in respect of the goods concerned covered by the signs at issue consisted both of professionals in the medical sector and of the general public.
117 The applicant’s first complaint, which is referred to in paragraph 110 above, must therefore be rejected.
– The comparison of the marks at issue
118 The applicant submits that, unlike the Opposition Division, the Board of Appeal did not come to a clear conclusion regarding the phonetic and conceptual comparison of the signs at issue. According to the applicant, the signs at issue are conceptually dissimilar on the ground that the first part of the mark applied for, namely that corresponding to the term ‘int’, can be understood to allude to the word ‘international’, while the first part of the two earlier marks, namely that corresponding to the term ‘ind’, can be understood to allude to the word ‘India’.
119 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).
120 In the present case, the marks to be compared are the following:
Mark applied for | Earlier EU trade mark | Earlier national trade mark |
INTAS |
| 
|
121 First, it must be pointed out, as the Board of Appeal did in paragraph 39 of the contested decision, that the mark applied for consists of the word element ‘intas’ and that the earlier marks consist of the word element ‘indas’ and of a figurative element representing a red cross in a circle.
122 Secondly, it must be noted that, as the Board of Appeal correctly found, a finding which has not in that regard been disputed by the parties, the figurative element in the earlier marks has a weak distinctive character in relation to the goods in Classes 5 and 10. The use of such a red cross to indicate medical or health-related goods is common, or even banal.
123 Thirdly, as regards the visual comparison of the signs at issue, it is important to point out that the Board of Appeal’s assessment, in paragraph 40 of the contested decision, that the signs at issue are visually similar to an average degree is not vitiated by any error of assessment. It is not, moreover, disputed by the parties.
124 Fourthly, as regards the phonetic comparison of the signs at issue, the Board of Appeal correctly found, in paragraph 41 of the contested decision, that the pronunciation of the signs coincided in the sound of the letters ‘in’ and ‘as’. It correctly added that the different consonants ‘t’ and ‘d’, placed in the middle of the word elements ‘intas’ and ‘indas’ respectively, were pronounced in similar ways, even though the sound ‘ti:’ in the mark applied for is voiceless, in contrast to the sound ‘di:’ in the earlier marks. Lastly, the Board of Appeal did not make any errors of assessment in finding that the signs at issue shared the same length, rhythm and intonation and in concluding that they were phonetically similar to a high degree.
125 Consequently, contrary to what the applicant submits, the Board of Appeal came, as regards the phonetic similarity of the signs at issue, to a clear conclusion which is not vitiated by any errors of assessment.
126 Fifthly, as regards the conceptual comparison of the signs at issue, in paragraph 42 of the contested decision, the Board of Appeal correctly stated that neither the word ‘intas’ nor the word ‘indas’ has a meaning in the languages of the European Union, Spanish included. In that respect, the applicant confines itself to claiming, without proving that claim, that the word elements of the signs at issue, ‘intas’ and ‘indas’, can be split into two words, ‘ind’ and ‘int’, which refer to the words ‘India’ and ‘international’ respectively. That argument, which is based on mere unfounded speculation, cannot succeed.
127 Consequently, since the mark applied for, which consists of two syllables, namely ‘in’ and ‘tas’, and the word element ‘indas’ in the earlier marks, which also consists of two syllables, ‘in’ and ‘das’, do not have a meaning in any language of the European Union and since the figurative element in the earlier marks is only weakly distinctive (see paragraph 122 above) and is not capable of having an influence on the conceptual comparison of those signs, the Board of Appeal did not make an error of assessment in confining itself to finding that the concept conveyed by the figurative element of the earlier marks could not, on its own, compensate for the visual and phonetic similarities of the signs at issue.
128 It follows that the Board of Appeal came, following an overall assessment, to a clear conclusion regarding the overall similarity of the marks at issue and that, as regards, in particular, the conceptual comparison of those marks, it correctly found that the only element that was capable of having a meaning did not have an influence on the finding that the marks at issue were similar overall on account of their high degree of phonetic similarity and average degree of visual similarity.
129 The applicant’s second complaint, which is referred to in paragraph 118 above, must therefore be rejected.
– The comparison of the goods
130 The applicant disputes that there is any similarity between the ‘materials for dressings’ covered by the earlier national mark and the goods in Classes 5 and 10 covered by the mark applied for, which, in essence, except for ‘inhalation products for the treatment of respiratory diseases’, correspond to ‘prescription-only medicines or instruments pre-filled with prescription-only medicines’. According to the applicant, the goods covered by the mark applied for and the goods covered by the earlier national mark are neither complementary nor in competition with each other. It submits that the physical natures, the processes of selection, the modes of use, the ways in which the goods covered by the mark applied for and the goods covered by the earlier national mark are offered for sale, the distributions channels of those goods, the regulations that govern their sale and purchase and the relevant publics are different. The applicant adds that, if it were to be acknowledged that the earlier EU trade mark had been used for any of the goods in respect of which it had been registered, then arguments similar to those put forward to dispute the similarity between the goods covered by the trade mark applied for and those covered by the earlier national trade mark, namely that the goods at issue are neither in competition with each other nor complementary to each other, would make it possible to dispute the existence of a similarity between the goods covered by the mark applied for and those covered by the earlier EU trade mark.
131 It is apparent from settled case-law that, in assessing the similarity of the goods covered by the marks at issue, all the relevant factors relating to those goods should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. In this connection, complementary goods are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for those goods (see judgment of 11 June 2009, Bastos Viegas v OHIM — Fabre Médicament (OPDREX), T‑33/08, not published, EU:T:2009:197, paragraph 24 and the case-law cited). Thus, for the purposes of assessing whether goods and services are complementary, the relevant public’s perception of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22 and the case-law cited). Other factors may also be taken into account, such as, for example, the distribution channels of the goods concerned (see judgment of 11 September 2014, Galileo International Technology v OHIM — ESA and Commission (GALILEO), T‑450/11, not published, EU:T:2014:771, paragraph 45 and the case-law cited).
132 It should be noted at the outset that proof of genuine use of the earlier marks has been furnished in connection with the goods referred to in paragraph 15 above and therefore the Board of Appeal assessed, in paragraphs 44 to 46 of the contested decision, whether the goods covered by the earlier marks with regard to which proof of genuine use had been furnished and those in Classes 5 and 10 covered by the mark applied for were similar.
133 Next, in the first place, as regards the comparison between the goods in Class 5 covered by the mark applied for and the ‘materials for dressings’ in that class covered by the earlier national mark, it is important to note, first, that, as has been stated in paragraphs 113 to 116 above, those goods are aimed at the same consumers, namely end consumers and professionals in the health sector.
134 Secondly, the goods in Class 5 covered by the mark applied for and the ‘materials for dressings’ covered by the earlier national mark have the same purpose, in the sense that they relate, as a whole, to the health sector. Those goods all pursue the objective of providing care in the medical or veterinary sectors. Furthermore, the Court has already held that ‘materials for dressings’ and ‘pharmaceutical products’ relate, as a whole, to health (see, to that effect, judgment of 10 February 2015, Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraphs 59 and 60).
135 Thirdly, it has already been held that goods such as those at issue in the present case use the same distribution channels, such as pharmacies or hospital supply services (see, to that effect, judgment of 3 June 2015, Pensa Pharma v OHIM — Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 135). On that basis, the applicant’s argument that ‘materials for dressings’ may be purchased in a supermarket has no bearing on the finding that there are, however, shared distribution channels.
136 Fourthly, the goods at issue are complementary, in the sense that one is indispensable or important for the use of the other. As the Board of Appeal correctly found, ‘gauzes’ or ‘compresses’, which are part of ‘materials for dressings’, may be pre-impregnated with medicinal substances. Furthermore, the use of ‘materials for dressings’ is often essential in case of parenteral or intravenous administration or topical application of medicines. Consequently, the relevant public, if faced with the goods at issue offered for sale under similar marks, would perceive them as coming from the same undertaking. Moreover, the Court has already acknowledged that ‘materials for dressings’ have a strong complementary connection with pharmaceutical preparations (see, to that effect, judgment of 3 June 2015, PENSA PHARMA and pensa, T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 135).
137 Fifthly, it must be held that the elements of similarity between the goods in Class 5 covered by the mark applied for and the ‘materials for dressings’ in that class covered by the earlier national mark outweigh the elements of differentiation relating to their nature, method of use, the regulations governing their sale and purchase and any possible lack of competition between the goods at issue.
138 Consequently, the Board of Appeal did not make an error of assessment when it found, in paragraph 44 of the contested decision, that the goods in Class 5 covered by the mark applied for and the ‘materials for dressings’ in that class covered by the earlier national mark were similar to an average degree.
139 In the second place, as regards the comparison between the goods in Class 10 covered by the mark applied for and the ‘materials for dressings’ in Class 5 covered by the earlier national mark, first, it is important to note that the goods concerned pursue the same objective or have the same intended purpose, namely medical care for external use on humans or animals whether or not in the context of therapeutic or surgical treatment. They therefore all relate to the health sector.
140 Secondly, the goods at issue are used by the same public, namely the general public and professionals in the medical sector.
141 Thirdly, the goods concerned use the same distribution channels, namely pharmacies or hospital supply services.
142 Fourthly, the goods at issue are complementary, on account of the fact that the goods covered by the earlier national mark are important for the use of the goods covered by the mark applied for and vice versa. It is a matter of common knowledge that ‘materials for dressings’ are used when an injection is administered to a patient, with the result that the relevant public, when faced with those goods, is likely to think that they come from the same supplier.
143 Fifthly, it must be pointed out that the elements of similarity between the goods at issue outweigh the differences between them relating to their nature, method of use, the ways in which they are offered for sale and any possible lack of competition between them.
144 Consequently, the Board of Appeal did not make any errors of assessment in finding, in paragraph 45 of the contested decision, that the goods in Class 10 covered by the mark applied for were similar to an average degree to the ‘materials for dressings’ in Class 5 covered by the earlier national mark.
145 In the third place, as regards the comparison between the goods in Class 10 covered by the mark applied for and the goods in Class 10 covered by the earlier EU trade mark, first, it must be noted that the goods at issue are all for medical or veterinary use and can be used to provide care to humans or animals. They therefore all relate to the health sector.
146 Secondly, the goods at issue are complementary. They are used simultaneously by doctors and by nursing staff when providing health care to patients during medical interventions and surgical operations.
147 Thirdly, the target consumers are the same, namely doctors and nursing staff.
148 Fourthly, the goods at issue use the same distribution channels, such as hospital supply services.
149 Fifthly, the elements of similarity between the goods outweigh the elements of differentiation relating, in particular, to their nature and the lack of competition between them.
150 Consequently, the Board of Appeal also did not make any errors of assessment in finding, in paragraph 46 of the contested decision, that the goods at issue were similar to an average degree.
151 In view of all of the foregoing, the applicant’s complaint seeking to maintain that the condition that the goods covered by the signs at issue must be similar was not satisfied in the present case must be rejected.
– The global assessment of the likelihood of confusion
152 The applicant submits that the finding in paragraph 50 of the contested decision, namely that ‘the relevant public includes the public at large and the professional public in the medical field, both displaying a high degree of attention as long as the relevant goods relate to people’s health’, means that the Board of Appeal must have implicitly taken the view that some of the goods covered by the earlier marks were not concerned with people’s health. The applicant infers from this that those goods, which are not concerned with people’s health and are covered by the earlier marks, are dissimilar to the goods covered by the trade mark applied for and, therefore, that Article 8(1)(b) of Regulation 2017/1001 does not apply. In addition, the applicant states that, if one of the criticisms made by it in the context of its previous complaints were to be successful, a fortiori, the Board of Appeal’s analysis, which concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, would be vitiated.
153 It must be borne in mind that a likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (see paragraph 105 above). The likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment thus implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks at issue and that of the goods or services at issue (see paragraph 104 above). Accordingly, a low degree of similarity between those goods or services at issue may be offset by a high degree of similarity between the marks at issue, and vice versa (judgments of 13 September 2007, Il Ponte Finanziaria v OHIM, C‑234/06 P, EU:C:2007:514, paragraph 48, and of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 25).
154 In the present case, it is necessary to reject the applicant’s complaint, referred to in paragraph 152 above, seeking to submit that the Board of Appeal must have implicitly taken the view that some of the goods covered by the earlier marks were not concerned with people’s health and that those goods were therefore dissimilar to the goods covered by the mark applied for. In that regard, it is sufficient to state that that complaint is based on a misreading of the contested decision. As is apparent from a combined reading of paragraphs 44 to 46 and 50 of the contested decision, the Board of Appeal found that all the goods covered by the marks at issue related to the health sector.
155 Furthermore, it must be stated that no other complaint which the applicant has put forward to dispute the Board of Appeal’s assessments as regards the relevant public, the similarity of the signs at issue and the similarity of the goods covered by those signs has been successful.
156 Consequently, it must be held, first, that there is an average degree of visual similarity and a high degree of phonetic similarity between the signs at issue and that the conceptual comparison does not have any influence on those visual and phonetic similarities (see paragraph 128 above), secondly, that the goods covered by the marks at issue are similar to an average degree (see paragraphs 138, 144 and 150 above) and, thirdly, that the inherent distinctiveness of the earlier marks is normal, which the applicant does not, moreover, dispute.
157 It follows that the Board of Appeal was right in finding, in paragraph 52 of the contested decision, that there was, for the relevant public, consisting of the general public and of professionals in the medical field, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, as regards the marks at issue, in spite of that public’s high level of attention. It has already been held that the fact that the relevant public will pay more attention to the identity of the producer or supplier of the product which it wishes to purchase does not, however, mean that it will examine the mark before it down to the smallest detail or that it will compare it in minute detail to another mark (judgment of 3 June 2015, PENSA PHARMA and pensa, T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 152).
158 In view of all of the foregoing, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected and the action must therefore be dismissed in its entirety.
Costs
159 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
160 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.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Intas Pharmaceuticals Ltd to pay the costs.
Gervasoni | Madise | Da Silva Passos |
Delivered in open court in Luxembourg on 7 November 2019.
Table of contents
Background to the dispute
Forms of order sought
Law
Preliminary observations
Admissibility
The arguments which the applicant put forward at the hearing
The pleas of inadmissibility put forward by the intervener
Substance
Proof of genuine use of the earlier marks
– Whether there has been infringement of Rule 22 of Regulation No 2868/95
– Whether the use of the earlier EU trade mark is genuine
– Proof of genuine use of the earlier national trade mark in connection with ‘materials for dressings’
Whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001
– The relevant public
– The comparison of the marks at issue
– The comparison of the goods
– The global assessment of the likelihood of confusion
Costs