Case T‑20/19
(publication by extracts)
Pablosky, SL
v
European Union Intellectual Property Office
Judgment of the General Court (Second Chamber), 8 July 2020
(EU trade mark — Opposition proceedings — Application for the EU word mark mediFLEX easystep — Earlier EU figurative mark Stepeasy — Relative grounds for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001)
1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Review of the legal classification given to the facts of the dispute — Review of the assessment by the Board of Appeal of the likelihood of confusion — No dispute in relation to the findings as regards the factors that are essential to the analysis of that likelihood of confusion — Effect
(European Parliament and Council Regulation 2017/1001, Art. 72)
(see paragraph 26)
2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Determination of the relevant public — Level of attention of the public
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 38-40, 42)
3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Determination of the relevant public — Level of attention of the public — Health-related goods
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraph 41)
4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Likelihood of confusion with the earlier mark — Word mark mediFLEX easystep and figurative mark Stepeasy
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 45, 53-57, 110-117)
5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 49, 50)
6. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paragraphs 106-109)
Résumé
In the judgments Pablosky v EUIPO — docPrice (mediFLEX easystep) (T‑20/19) and Pablosky v EUIPO — docPrice (mediFLEX easySTEP) (T‑21/19), delivered on 8 July 2020, the Court partially upheld the actions brought against the decisions of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) relating to two opposition proceedings between Pablosky (‘the applicant’) and docPrice (‘the intervener’).
In the present cases, the intervener had sought registration of the word mark mediFLEX easystep and the figurative mark mediFLEX easySTEP, (1) in respect of, inter alia, ‘orthopaedic footwear’, ‘boots for medical purposes’, ‘clothing’, ‘headgear’, ‘footwear’ and ‘health shoes’. The applicant had filed notices of opposition to the registration of those marks on the basis of its earlier figurative mark Stepeasy, which is registered in respect of ‘clothing’, ‘footwear’ and ‘headwear’. The Board of Appeal had found that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, (2) with regard to any of the goods at issue, even with regard to those which were identical. In its actions for annulment, the applicant submitted that the Board of Appeal should have found that such a likelihood of confusion existed.
In that regard and in the first place, the Court pointed out that the fact that parties which claim that a decision of a Board of Appeal should be annulled do not dispute certain factors that are essential to the analysis of the likelihood of confusion does not mean that the Court may not or must not review the merits of those factors, since those factors constitute an essential stage of the reasoning which the Court is required to engage in in order to carry out that review. Where one of the parties claiming that the Board of Appeal’s decision should be annulled has called into question the Board of Appeal’s assessment relating to the likelihood of confusion, the Court has, by virtue of the principle of interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, jurisdiction to examine the Board of Appeal’s assessment of those factors. Lastly, the Court stated that it cannot be bound by an incorrect assessment of the facts by the Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before it.
In the second place, the Court pointed out that health-related goods may be aimed both at professionals and at end consumers who will display a high level of attention. Consequently, it held that the Board of Appeal had erred in finding that ‘orthopaedic footwear’, ‘boots for medical purposes’ and ‘health shoes’ were aimed at the general public which had an average level of attention, rather than at healthcare professionals specialising in orthopaedics and at consumers belonging to the general public who suffered from orthopaedic problems requiring them to wear adapted footwear, whose level of attention is high.
In the third place, the Court held that the ‘orthopaedic footwear’ and ‘boots for medical purposes’ covered by the mark applied for and the ‘footwear’ covered by the earlier mark are similar to a low degree and not, as the Board of Appeal had pointed out, ‘at least to a low degree’, which suggested that the similarity might be higher in degree than ‘low’. Although orthopaedic footwear or footwear for medical purposes serves to a lesser extent, like all ‘footwear’, to cover and protect the feet, it primarily has the function of correcting physical handicaps of an orthopaedic nature. Furthermore, it is a matter of common knowledge that orthopaedic footwear or footwear for medical purposes is either directly provided by a physician, on prescription, or sold in specialist shops for orthopaedic or medical products. Lastly, it is not produced, like footwear in general, industrially or in a standardised manner, but is manufactured to measure or, at the very least, tailored individually by orthopaedic technicians in accordance with each patient’s needs.
The Court thus held that, in the light of the high or average level of attention which the public concerned would display and the low degree of inherent distinctiveness of the earlier mark in relation to ‘footwear’, there was no likelihood of confusion with regard to the ‘health shoes’, ‘orthopaedic footwear’, ‘boots for medical purposes’ and ‘footwear’ covered by the mark applied for.
By contrast, the Court held that, as regards the ‘clothing’ and ‘headgear’ covered by each of the marks at issue, the Board of Appeal had erred in finding that there was no likelihood of confusion. Consequently, the Court annulled both of the contested decisions of the Board of Appeal in so far as they concern those goods.