JUDGMENT OF THE GENERAL COURT (Third Chamber)
24 October 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark nume — Earlier EU word mark numederm — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑41/19,
MSI Svetovanje, marketing, d.o.o., established in Vrhnika (Slovenia), represented by M. Maček, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Kompari and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Industrial Farmaceutica Cantabria, SA, established in Madrid (Spain),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 November 2018 (Case R 722/2018-5), relating to opposition proceedings between Industrial Farmaceutica Cantabria and Nutrismart d.o.o.,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberation, of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 January 2019,
having regard to the response lodged at the Court Registry on 8 May 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 16 February 2016, Nutrismart d.o.o., the predecessor in title to the applicant, MSI Svetovanje, marketing, d.o.o., 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 following figurative sign:
3 The goods in respect of which registration was sought are in, inter alia, Classes 5, 29 and 30 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: ‘Pharmaceutical, veterinary and sanitary preparations for medical purposes; aloe vera preparations for pharmaceutical purposes; aluminium acetate for pharmaceutical purposes; amino acids for medical purposes; albumin dietary supplements; pearl powder for medical purposes; candy, medicated; sweets for medical purposes; diabetic bread adapted for medical use; diagnostic preparations for medical purposes; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; elixirs (pharmaceutical preparations); infant formula; nutritional supplements; cachets for pharmaceutical purposes; lotions for pharmaceutical purposes; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; mineral waters for medical purposes; mineral food supplements; lacteal flour for babies; malted milk beverages for medical purposes; milk ferments for pharmaceutical purposes; milk sugar for pharmaceutical purposes; lozenges for pharmaceutical purposes; douching preparations for medical purposes; protein dietary supplements; slimming pills; syrups for pharmaceutical purposes; medicated candies; sugar for medical purposes; antioxidant pills; tanning pills; medicinal drinks; medicinal tea; medical preparations for slimming purposes; mud (medicinal -); herbal teas for medicinal purposes; chewing gum for medical purposes; casein dietary supplements’;
– Class 29: ‘Meat, fish, poultry and game; albumen for culinary purposes; low-fat potato chips; weed extracts for food; hummus [chickpea paste]; yoghurt, soups, preparations for making soup, broth concentrates, cocoa butter; kefir; coconut fat; coconut, desiccated; coconut oil, coconut butter; almonds, ground; broth; milk beverages, milk predominating, milk shakes; milk and milk products; palm kernel oil for food; nuts, prepared; palm oil for food; sausages in batter; tomato purée; tomato juice for cooking; poultry, not live; preparations for making bouillon, fruit-based snack food; dishes of fish; canned fruits; preserved fruit, cooked fruits (compotes), frozen fruits, fruit pulp, fruit salads; fruit chips; fruit peel, fruit jellies, sesame oil; whey; curd; cream (dairy products); preserved soya beans for food, soya milk (milk substitute); sunflower seeds, prepared; whipped cream; tinned vegetables, preserved vegetables, cooked vegetables; dried vegetables, preparations for making vegetable soup, vegetable mousses, vegetable salads; vegetable juices; albumin milk’;
– Class 30: ‘Ice cream; beverages based on cocoa, coffee, chocolate or tea’.
4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/160 of 25 August 2016.
5 On 25 November 2016, Industrial Farmaceutica Cantabria 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 the EU word mark numederm, which was filed on 17 February 2015 and registered on 23 September 2016 under the number 13745 052 in respect of goods in Classes 5, 29 and 30 corresponding, for each of those classes, to the following description:
– Class 5: ‘Food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’;
– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’;
– Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’.
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8 On 20 March 2018, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion as regards the following goods:
– Class 5: ‘Pharmaceutical preparations for medical purposes; aloe vera preparations for pharmaceutical purposes; aluminium acetate for pharmaceutical purposes; amino acids for medical purposes; albumin dietary supplements; pearl powder for medical purposes; candy, medicated; sweets for medical purposes; diabetic bread adapted for medical use; diagnostic preparations for medical purposes; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; elixirs (pharmaceutical preparations); infant formula; nutritional supplements; cachets for pharmaceutical purposes; lotions for pharmaceutical purposes; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; mineral waters for medical purposes; mineral food supplements; lacteal flour for babies; malted milk beverages for medical purposes; milk ferments for pharmaceutical purposes; milk sugar for pharmaceutical purposes; lozenges for pharmaceutical purposes; douching preparations for medical purposes; protein dietary supplements; slimming pills; syrups for pharmaceutical purposes; medicated candies; sugar for medical purposes; antioxidant pills; tanning pills; medicinal drinks; medicinal tea; medical preparations for slimming purposes; mud (medicinal -); herbal teas for medicinal purposes; chewing gum for medical purposes; casein dietary supplements’;
– Class 29: ‘Meat, fish, poultry and game; albumen for culinary purposes; low- fat potato chips; weed extracts for food; hummus [chickpea paste]; yoghurt, soups, preparations for making soup, broth concentrates, cocoa butter; kefir; coconut fat; coconut, desiccated; coconut oil, coconut butter; almonds, ground; broth; milk beverages, milk predominating, milk shakes; milk and milk products; palm kernel oil for food; nuts, prepared; palm oil for food; sausages in batter; tomato purée; tomato juice for cooking; poultry, not live; preparations for making bouillon, fruit-based snack food; dishes of fish; canned fruits; preserved fruit, cooked fruits (compotes), frozen fruits, fruit pulp, fruit salads; fruit chips; fruit peel, fruit jellies, sesame oil; whey; curd; cream (dairy products); preserved soya beans for food, soya milk (milk substitute); sunflower seeds, prepared; whipped cream; tinned vegetables, preserved vegetables, cooked vegetables; dried vegetables, preparations for making vegetable soup, vegetable mousses, vegetable salads; vegetable juices; albumin milk’;
– Class 30: ‘Ice cream; beverages based on cocoa, coffee, chocolate or tea’.
9 On 19 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10 By decision of 8 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision by rejecting the opposition and allowing registration of the mark applied for in respect of the following goods in Class 5: ‘aluminium acetate for pharmaceutical purposes; diagnostic preparations for medical purposes; lotions for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; douching preparations for medical purposes’. The Board of Appeal dismissed the remainder of the appeal.
11 In essence, the Board of Appeal found that the relevant public consisted of the general public and of professionals and that the level of attention of that relevant public ranged from average to high. As regards the relevant territory, it stated that, for reasons of procedural economy, it would examine whether there was a likelihood of confusion by taking into account the perception of the English-speaking part of the relevant public, since that part of the relevant public would be able to understand the meaning of the term ‘derm’, which is included in the earlier mark (see paragraphs 26 to 31 of the contested decision).
12 As regards the comparison of the goods, the Board of Appeal found that the goods in Class 5 covered by the mark applied for were, in part, identical (‘dietetic foods adapted for medical purposes, dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use, nutritional supplements'), in part, similar (‘pharmaceutical preparations for medical purposes; aloe vera preparations for pharmaceutical purposes; amino acids for medical purposes; albumin dietary supplements; pearl powder for medical purposes; candy, medicated; sweets for medical purposes; diabetic bread adapted for medical use; dietetic beverages adapted for medical purposes; elixirs (pharmaceutical preparations); infant formula; cachets for pharmaceutical purposes; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; mineral waters for medical purposes; mineral food supplements; lacteal flour for babies; malted milk beverages for medical purposes; milk ferments for pharmaceutical purposes; milk sugar for pharmaceutical purposes; lozenges for pharmaceutical purposes; protein dietary supplements; slimming pills; syrups for pharmaceutical purposes; medicated candies; sugar for medical purposes; antioxidant pills; tanning pills; medicinal drinks; medicinal tea; medical preparations for slimming purposes; mud (medicinal -); herbal teas for medicinal purposes; chewing gum for medical purposes; casein dietary supplements') and, in part, dissimilar (‘aluminium acetate for pharmaceutical purposes; diagnostic preparations for medical purposes; lotions for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; douching preparations for medical purposes') to the goods covered by the earlier mark (see paragraphs 49 to 54 of the contested decision).
13 As regards the goods in Class 29 covered by the mark applied for, the Board of Appeal stated that they were identical (meat, fish, poultry and game; milk and milk products; canned fruits; preserved fruit, cooked fruits (compotes), frozen fruits; tinned vegetables, preserved vegetables, cooked vegetables; dried vegetables; milk beverages, milk predominating, milk shakes; yoghurt, whipped cream, cream (dairy products); kefir; sesame oil; palm kernel oil for food; coconut oil, coconut butter; palm oil for food; cocoa butter; coconut fat; low-fat potato chips; weed extracts for food; almonds, ground; nuts, prepared; hummus [chickpea paste]; coconut, desiccated; tomato purée; tomato juice for cooking; fruit pulp, fruit salads; fruit-based snack food; fruit chips; fruit peel; fruit jellies; preserved soya beans for food; sunflower seeds, prepared; preparations for making vegetable soup, vegetable mousses, vegetable salads; vegetable juices; whey; and curd), highly similar (soya milk (milk substitute) and albumin milk; soups, preparations for making soup, broth concentrates; broth and preparations for making bouillon), similar (albumen for culinary purposes) or at least similar (sausages in batter; dishes of fish; poultry, not live) to certain goods covered by the earlier mark (see paragraphs 55 to 64 of the contested decision).
14 As regards the goods in Class 30 covered by the mark applied for, the Board of Appeal found that those goods were identical (ice cream; beverages based on cocoa, coffee, chocolate or tea) to the goods covered by the earlier mark (see paragraphs 65 and 66 of the contested decision).
15 As regards the comparison of the signs, the Board of Appeal stated that there was a certain degree of visual similarity between the signs at issue, that they were phonetically similar to an average degree and that there was no conceptual similarity between them (see paragraphs 41 to 43 of the contested decision).
16 The Board of Appeal also took the view that the earlier mark was moderately distinctive as regards the goods in Class 5, since it contained the term ‘derm’, which could be associated with the words ‘derma’, ‘dermal’ and ‘dermatology’, whereas, for the remaining goods, the earlier mark possessed a normal degree of distinctiveness (see paragraph 70 of the contested decision).
17 Consequently, as a result of a global assessment of the likelihood of confusion, the Board of Appeal decided that there was such a likelihood of confusion on the part of the relevant public with regard to the goods that had been found to be identical or similar (see paragraph 72 of the contested decision).
Forms of order sought
18 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
19 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
20 In support of its action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits that the Board of Appeal made a number of errors in assessing whether there was a likelihood of confusion.
21 EUIPO disputes the applicant’s arguments.
22 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.
23 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).
24 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
25 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 or services 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).
The relevant public
26 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).
27 Having regard to the goods at issue, the Board of Appeal stated, in paragraph 26 of the contested decision, that the relevant public consisted of the general public and of professionals and that its level of attention ranged from average to high.
28 In particular, in paragraph 27 of the contested decision, as regards the pharmaceutical, veterinary and sanitary preparations for medical purposes, the Board of Appeal pointed out, relying, inter alia, on the judgment of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN) (T‑331/09, EU:T:2010:520), that it was apparent from the case-law that those goods receive a high level of attention when they are prescribed by medical professionals and a heightened level of attention when they are purchased by the general public with no specific medical or pharmaceutical knowledge.
29 Similarly, as regards the various kinds of dietary supplements, dietetic preparations and nutritional supplements, which may be prescribed by professionals or bought freely by the general public, the Board of Appeal found that the level of attention of the average consumer might be heightened, since the use of those goods might affect his health, and that that was so regardless of the fact that those goods could be sold without a medical prescription (see paragraph 28 of the contested decision).
30 Lastly, as regards the goods in Classes 29 and 30, the Board of Appeal observed that those goods were everyday consumer goods, that they were therefore aimed at the general public and that that public’s level of attention was average (see paragraph 29 of the contested decision).
31 The applicant considers those findings to be correct. However, it submits that if the level of attention of consumers is high with regard to the goods in Class 5 because they may affect their health, the same should be true of the food products covered by Classes 29 and 30. It maintains that the level of attention of consumers as regards food products has risen dramatically in the last couple of years as a result of the use of genetically modified organisms in food production, epidemics that are supposedly linked to certain meat products and legislation regarding labelling.
32 In the present case, the parties do not dispute that the relevant public consists both of average consumers and of specialist consumers. Likewise, it is not disputed that pharmaceutical preparations and the goods that are capable of being equated with pharmaceutical preparations, as well as dietary or nutritional supplements and dietetic preparations, are the subject of a high or heightened level of attention on the part of the relevant public. Those findings, which do not contain any errors of assessment, must be upheld.
33 However, as was stated by the Board of Appeal in the contested decision, the relevant public does not have such a level of attention when it is faced with goods in Classes 29 and 30, which cover everyday consumer goods. The Court cannot therefore uphold the applicant’s claim that consumers’ preoccupations with regard to food chain safety and quality increases that public’s level of attention with regard to those goods, a level of attention which remains average with regard to the general public, whether that public is English-speaking or not.
The comparison of the goods
34 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
35 In the present case, the Board of Appeal found that some of goods in Class 5 and all the goods in Classes 29 and 30 covered by the mark applied for were identical, highly similar or similar to the goods in the corresponding classes covered by the earlier mark (see paragraphs 49 to 66 of the contested decision).
36 The Board of Appeal also found that some of the goods in Class 5 were dissimilar (see paragraph 53 of the contested decision and paragraph 10 above).
37 In its action, the applicant does not dispute the merits of the Board of Appeal’s findings as regards the comparison of the goods in Classes 29 and 30. Those findings, which are correct, must be upheld.
38 By contrast, the applicant disputes the Board of Appeal’s finding that some of the goods in Class 5 covered by the mark applied for are identical, highly similar or similar to the goods in that class covered by the earlier mark.
The dietetic products and nutritional supplements covered by the mark applied for and the food supplements covered by the earlier mark (Class 5)
39 As regards the comparison of the goods in Class 5, the applicant disputes, first of all, the Board of Appeal’s finding that the dietetic foods adapted for medical purposes, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use and nutritional supplements covered by the mark applied for are identical to the ‘food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’ covered by the earlier mark, because, in its view, those goods differ in nature and are not interchangeable with each other. It submits that the goods covered by the mark applied for which fall within the category of dietetic foods are intended to replace, and not to supplement, the intake of non-dietetic food products, which are usually available in the form of whole foods. The applicant maintains that dietetic foods are foods in which the nutritional content has been modified for use in special diets, whereas food supplements are concentrated sources of nutrients or other substances, which are marketed in the form of ‘doses’ and have a nutritional or physiological effect. It submits that food supplements are not therefore meant to replace food or dietetic food but should be taken in addition to regular food or dietetic food.
40 In the present case, in paragraph 49 of the contested decision, the Board of Appeal found that the broad category of ‘dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements’ covered by the mark applied for included as such, or overlapped with, the ‘food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’ covered by the earlier mark.
41 It is apparent from the case-law that goods can be regarded as identical where the goods covered by the earlier mark are included in a more general category covered by the trade mark application (see judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).
42 In that regard, it must first of all be pointed out that the applicant does not dispute that the nutritional supplements covered by the mark applied for are capable of including or overlapping with the food supplements covered by the earlier mark.
43 Furthermore, as EUIPO observes in its response, the nature of the goods at issue can be understood by means of different criteria; it may be based on composition, the functioning principle or the physical condition. Accordingly, nutritional supplements may be in solid or liquid form, like dietetic foods adapted for medical purposes, dietetic beverages adapted for medical purposes and dietetic substances adapted for medical use, and they are all consumed by humans. They contain substances envisaged ‘to supplement a normal diet and improve health’. Those goods may also be used interchangeably, depending on each person’s health needs. More commonly, they are used in combination to provide the best outcome for the health of the consumer.
44 Consequently, in the light of the nature, intended purpose and method of use of dietetic foods adapted for medical purposes, dietetic beverages adapted for medical purposes and dietetic substances adapted for medical use, on the one hand, and of food supplements for medical purposes, on the other hand, all of which relate to health and food, it must be held that those goods may at least be considered to be similar to each other for the purposes of the comparison of the goods.
The pharmaceutical preparations covered by the mark applied for and the food supplements covered by the earlier mark (Class 5)
45 In paragraph 50 of the contested decision, the Board of Appeal observed that the ‘food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’ covered by the earlier mark were substances prepared for special dietary requirements, which are used to improve a consumer’s medical condition. Consequently, the Board of Appeal found that the purpose and method of use of those goods were similar to those of the ‘pharmaceutical preparations for medical purposes’ covered by the mark applied for. The Board of Appeal also pointed out that those goods had the same distribution channels, since they were marketed via specialist dietetic shops and pharmacies, and that they had the same target public.
46 In that regard, the applicant confines itself to criticising only one aspect of the foregoing analysis. It merely submits that the ‘pharmaceutical preparations for medical purposes’ covered by the mark applied for and the food supplements covered by the earlier mark are not similar because the latter are sold in pharmacies and specialist shops, whereas the former are sold only in pharmacies, and because they are produced according to different standards.
47 It must therefore be pointed out that the parties do not dispute that the distribution channels are in part the same. However, even a partial overlap in the points of sale can be an indication that the goods concerned are similar, given that there are numerous points of sale — namely, pharmacies — in which the goods covered by the mark applied for and those covered by the earlier mark are sold to the public (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 31).
48 Furthermore, the mere fact that the sale of ‘pharmaceutical preparations for medical purposes’ and that of ‘food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’ may be regulated by different legal provisions does not affect the relevant public’s perception, given that, when choosing goods, that public is only very rarely aware of the applicable legal provisions (judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 32).
49 The Board of Appeal’s findings in paragraph 50 of the contested decision must therefore be upheld.
The other goods in Class 5 referred to by the applicant
50 The applicant also submits, in essence, that the goods ‘infant formula; lacteal flour for babies; slimming pills; tanning pills’ in Class 5 covered by the mark applied for are not intended for medical purposes and that they do not have the same purpose as the goods in Class 5 covered by the earlier mark. It maintains that such goods are not therefore similar to each other.
51 In the present case, in paragraph 51 of the contested decision, the Board of Appeal referred to various goods in Class 5 covered by the mark applied for, including ‘infant formula; lacteal flour for babies; slimming pills; tanning pills’ in order to state generally that those ‘pharmaceutical and natural preparations, remedies and articles’ were products the purpose of which was medical, just like the goods in Class 5 covered by the earlier mark.
52 The Board of Appeal also stated in paragraph 51 of the contested decision that those goods also coincided in their purpose, in the sense that were all intended to cover the nutritional needs of an organism to maintain its healthy condition. The Board of Appeal also pointed out that the goods in question shared their end users and distribution channels such as specialist dietetic shops, pharmacies and specialist sections in supermarkets, that they could be used in combination and that their method of use, namely oral administration, was the same.
53 It must be stated that, in order to conclude that the goods in question were similar, the Board of Appeal did not only take into account the medical purpose of the goods referred to by the applicant, but also other criteria.
54 Moreover, as regards the medical purpose of the goods referred to by the applicant, it must be held that such a purpose may be deduced from the fact that those goods are in Class 5, which, according to the Nice Classification, includes mainly pharmaceuticals and other preparations for medical or veterinary purposes and, in particular, dietary supplements intended to supplement a normal diet or to have health benefits and meal replacements and dietetic food and beverages adapted for medical or veterinary use. From that point of view alone, as EUIPO submits in its response, ‘infant formula; lacteal flour for babies; slimming pills; tanning pills’ may be regarded, generally, as goods for medical purposes within the meaning of the Nice Classification as regards goods in Class 5.
55 However, in order to conclude that the goods at issue were similar, the Board of Appeal also took into consideration the fact, which has not been disputed by the applicant, that all the goods referred to by the applicant were intended to cover the nutritional needs of an organism to maintain its healthy condition. The Board of Appeal also took into account, and those findings have also not been criticised by the applicant, elements of similarity which could be deduced from the method of use and the distribution channels (see paragraph 52 above).
56 Consequently, the Board of Appeal was entitled to find that the intended purpose and method of use of the goods referred to by the applicant were similar to those of the goods for medical purposes covered, in essence, by the earlier mark. The Board of Appeal also pointed out that those goods all had the same distribution channels, since they were marketed via specialist dietetic shops and pharmacies, and that they had the same target public.
57 For those reasons, there is no need to call into question the Board of Appeal’s finding in paragraph 51 of the contested decision that, in essence, the ‘infant formula; lacteal flour for babies; slimming pills; tanning pills’ covered by the mark applied for are similar to the ‘food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’ covered by the earlier mark.
Conclusion regarding the comparison of the goods
58 For the reasons set out above and having regard also to the fact that all of the goods at issue are generally meant to improve a person’s health (see paragraph 52 of the contested decision), the goods in dispute covered by the mark applied for may therefore be held to be at least similar to the corresponding goods covered by the earlier mark.
The comparison of the signs
59 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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).
60 In the present case, at the stage of describing the signs at issue, the Board of Appeal pointed out that the earlier mark was a word mark consisting of a single word, ‘numederm’, which could be split by the English-speaking part of the relevant public into two separate elements, ‘nume’ and ‘derm’, given that, for that part of the public, it was possible to associate the term ‘derm’ with the words ‘derma’, ‘dermal’ and ‘dermatology’, which mean ‘skin’, ‘part of the skin’ and ‘relating to the skin’. The Board of Appeal also stated that the mark applied for was a figurative mark, consisting of the thick and highly stylised letter sequences ‘nu’ and ‘me’ placed on top of each other (see paragraphs 36 and 37 of the contested decision).
61 As regards the visual, phonetic or conceptual similarity of the marks at issue, the Board of Appeal found, first, that there was a certain degree of visual similarity between the signs at issue because the sign applied for was included in its entirety in the beginning of the earlier sign, second, that those signs were phonetically similar to an average degree because the first two syllables, which were identical, were pronounced in the same way and the third syllable, which was specific to the earlier sign, was the only difference, and, thirdly, that they could not be compared from a conceptual standpoint (see paragraphs 38 to 43 of the contested decision).
The visual comparison
62 The applicant submits that there is only a low degree of visual similarity between the signs at issue. It maintains that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. It argues that, consequently, the term ‘nume’ cannot be separated from the term ‘derm’ in the earlier mark, because, even though the term ‘derm’ on its own has a meaning, the goods covered by that mark are not skincare or skin-related products, but, in general, food supplements, and that the Board of Appeal’s assumption in paragraph 70 of the contested decision that food supplements may affect the health of the skin is unfounded. It submits that the word ‘numederm’ is therefore a neologism which cannot be broken down. It maintains that the Board of Appeal should also have taken into account the manner in which the very stylised sequences of letters ‘nu’ and ‘me’ used in the mark applied for are written and the placing of those sequences of letters on top of one another, which divide the sign into two parts or into two words and give a visual appearance which is completely different from that given by the word reproduced in the earlier mark.
63 In particular, it submits that the Board of Appeal cannot take the view that the signs at issue could be written in an identical manner, since the use in the earlier mark of graphic elements that are identical to those in the mark applied for would not constitute, first, genuine use of the earlier mark as registered and would constitute, secondly, an infringement of the copyright in the mark applied for. The applicant states, in that regard, that the typography used in the sign applied for, the appearance of that sign and the packaging of the goods to which the mark applied for is affixed are protected by copyright. It submits that those elements are the work of a well-known industrial designer. It maintains that the stylised typography of the font, the bold letters and the manner in which ‘nu’ and ‘me’ are written are the well-thought-out work of that designer and are an integral part of the success of the mark applied for.
64 Contrary to what the applicant submits, the Board of Appeal was right in finding, in paragraph 36 of the contested decision, that, for the relevant English-speaking public, the earlier mark consisting of the single word ‘numederm’ would be split into two separate elements: ‘nume’ and ‘derm’. In the light of the meaning of the term ‘derm’, which can easily be associated with the words ‘derma’, ‘dermal’ and ‘dermatology’, meaning ‘skin’, ‘part of the skin’ and ‘relating to the skin’, that part of the relevant public can easily make such a distinction. It is apparent from the case-law that, although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a specific meaning or resemble words known to him (see to that effect, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).
65 Furthermore, at the stage of the visual comparison of the signs, it is important only to know whether the relevant public is, because it will perceive the meaning of the term ‘derm’, able easily to break down the word ‘numederm’ into two components, ‘nume’ and ‘derm’. That is the case here for the reasons set out in the contested decision. The question whether, as the applicant states, the possibility of breaking down the earlier sign visually must also depend on the goods in respect of which that sign is registered, which, in the present case, are not, according to the applicant, skin-related or skincare products, has no bearing on that finding. Such a question is part of the global assessment of the likelihood of confusion since, in that assessment, the signs under comparison are viewed in relation to the goods concerned. It must also be pointed out that the Board of Appeal’s assessment which the applicant criticises in that regard is in paragraph 70 of the contested decision, in which the Board of Appeal merely stated ‘that part of the relevant goods are food supplements that may affect a person’s health, including the health of their skin’, and relates to the global assessment of the likelihood of confusion and, more specifically, to the taking into account of the degree of distinctiveness of the earlier mark.
66 Furthermore, the Board of Appeal was also right in finding, in paragraph 37 of the contested decision, that the sign applied for consisted of the thick and highly stylised letter sequences ‘nu’ and ‘me’ placed on top of each other and that no other graphic elements had been added to that sign. Moreover, that description corresponds to that given by the applicant in the application.
67 Accordingly, the findings which the Board of Appeal made in order to conclude that there is a certain degree of visual similarity between the signs at issue cannot be called into question by the applicant’s arguments.
68 First, the Board of Appeal was right in finding, in paragraph 41 of the contested decision, that the degree of similarity which had been found to exist stemmed from the fact that, even though the signs at issue differed in the presence of the element ‘derm’ in the earlier mark, the element in common, ‘nume’, was that which could, since it was placed at the beginning of each of the marks at issue, be considered to be the most eye-catching element. As was pointed out by the Board of Appeal, it is indeed apparent from settled case-law that the consumer normally attaches more importance to the first part of words, with the result that the first element is likely to have a greater impact than the rest of the sign (see, to that effect, judgment of 15 December 2009, Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, not published, EU:T:2009:507, paragraph 40 and the case-law cited).
69 Secondly, the Board of Appeal was also right in stating, in paragraph 41 of the contested decision, that, despite the presence of an additional word element in the earlier mark, the presence of the element in common at the beginning of the signs at issue meant that it could not be denied that there was a certain degree of similarity between them (see, to that effect, judgment of 21 February 2013, Seven for all mankind/Seven, C‑655/11 P, not published, EU:C:2013:94, paragraph 101).
70 Thirdly, the Board of Appeal was justified in rejecting the applicant’s argument, reiterated before the Court, that the stylised font and the way in which the two elements ‘nu’ and ‘me’ in the mark applied for are placed on top of each other should have led it to the conclusion that the signs were visually dissimilar. As is apparent from the case-law, where a mark consists of word and figurative elements, the word element of that mark is, in principle, more distinctive than the figurative element, because the average consumer will more readily refer to the goods in question by citing their name than by describing their figurative element (see judgment of 13 September 2018, Eduard Meier v EUIPO — Calzaturificio Elisabet (Safari Club), T‑418/17, not published, EU:T:2018:540, paragraph 44 and the case-law cited).
71 In the present case, as was pointed out in paragraph 39 of the contested decision, the figurative elements relating to the stylised font and the placing of the elements ‘nu’ and ‘me’ in thick letters on top of each other cannot suffice to distract the relevant public’s attention away from the word element ‘nume’, which is common to the two signs at issue.
72 Likewise, it is also apparent from the case-law that the Board of Appeal was entitled to state in paragraph 40 of the contested decision that the protection which results from the registration of a word sign concerns the word mentioned in the application for registration and not any of the specific graphic or stylistic elements accompanying that sign. Since the earlier sign is a word sign, it may therefore be represented in any font, including in a version corresponding to that of the sign applied for. Consequently, the style in which the sign applied for is presented is irrelevant for the purposes of the visual comparison of the signs at issue (see, to that effect, judgments of 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 42 and the case-law cited, and of 28 March 2019, dm-drogerie markt v EUIPO — Albea Services (ALBÉA), T‑562/17, not published, EU:T:2019:204, paragraph 32 and the case-law cited.
73 It follows from the foregoing that the Board of Appeal was right in finding that there was a certain degree of visual similarity between the signs at issue.
The phonetic comparison
74 The applicant submits that the Board of Appeal neglected the importance of the special positioning of the syllables or words in the mark applied for, which are written on two lines. It claims that that positioning creates a specific phonetic impression. It maintains that the relevant English-speaking public will read the words in the mark applied for, ‘nu’ and ‘me’, as separate words and not as the word ‘nume’. It argues that, in the present case, the word ‘nu’ is an alternative spelling of the word ‘new’, which is frequently used in modern art and in slang. It submits that a simple search for the term ‘nu’ on the Internet confirms that analysis. Furthermore, it maintains that the word ‘me’ in English is always pronounced in the same way and refers to a pronoun used by a person to refer to himself as the object of a verb or preposition.
75 In the applicant’s submission, such a pronunciation of the terms ‘nu’ and ‘me’ was that envisaged by the creator of the mark applied for. The applicant maintains that that pronunciation is confirmed by its use of those terms in the course of trade. It argues that consumers will pronounce the sign applied for like that on the markets in which the applicant’s goods are already present, namely in Slovenia, in Croatia and in some other EU countries in which they have been gaining in reputation, which is apparent from, inter alia, the consumer video review of the applicant’s goods.
76 The applicant submits that, by contrast, the earlier sign is pronounced as ‘numederm’ and that there are significant differences in the rhythm, pauses and stress of the pronunciation in comparison with the sign applied for. It maintains that the earlier mark is longer, has more syllables, is read in one breath, without any pause, and is stressed only once. It submits that, by contrast, the sign applied for is short, but is read as two words, with a pause between them, and that each of those words is accented or stressed. The applicant argues that, owing to their completely different lengths, pronunciation, rhythm and stress, the signs at issue are phonetically dissimilar and the relevant public will easily distinguish between them.
77 In the present case, in order to conclude that there was an average degree of phonetic similarity between the signs at issue, the Board of Appeal found, in paragraph 42 of the contested decision, that the element which is common to both signs, namely the element ‘nume’, would be pronounced in the same way. It took the view that that similarity based on a coinciding element placed in the initial part of the signs at issue outweighed the differences highlighted by the applicant regarding the pronunciation, length and rhythm, differences which were all connected with the presence of the additional element ‘derm’ in the earlier mark. Those findings on the part of the Board of Appeal correspond to the facts and must be upheld.
78 Furthermore, even if the approach suggested by the applicant were justified and the term ‘nu’ had to be differentiated from the term ‘me’ within the element ‘nume’ in the mark applied for, it would then have to be held, as EUIPO states, that that would also apply to the pronunciation of the element ‘nume’ in the earlier mark. Such an approach, even if it were correct, would therefore have no effect on the finding that there is an average degree of phonetic similarity between the signs at issue.
The conceptual comparison
79 The applicant submits that the relevant public will perceive the meaning of the mark applied for as ‘new me’ and will refer to it in that way. It maintains that that is particularly true in connection with the dietary and food products for which it uses the mark applied for on the market. It argues that, for the consumer who uses its goods, that sign indicates a personal transformation. It submits that, by contrast, the sign covered by the earlier mark has no specific meaning, even though the word ‘numederm’ may be perceived by the English-speaking part of the relevant public as having to do with skin. It maintains that, furthermore, in the sign applied for, the use of a particular spelling, positioning and stylisation gives the consumer the impression that the goods covered by the mark applied for are modern, relaxed and easy accessible goods. It submits that, by contrast, the earlier mark gives a traditional, more clinical impression about the goods covered by that mark. In its view, the signs at issue are therefore completely dissimilar conceptually.
80 In the present case, in order to conclude that there was no conceptual similarity between the signs, the Board of Appeal stated, in paragraph 43 of the contested decision, that the English-speaking part of the relevant public would perceive the term ‘derm’ in the earlier mark as having to do with the skin, but would not give any particular meaning to the term ‘nume’. As regards the meaning of that latter term, which is reproduced in the mark applied for, the Board of Appeal found, in essence, that the applicant had not proved that that term would be understood as referring to the message ‘new me’ addressed to customers who want to make changes by using the goods covered by the mark applied for. The Board of Appeal took the view that it could not be presumed to have such a meaning because, inter alia, no examples of such a use in common parlance had been provided and that, even though certain associations of the term ‘nu’ to genres of music existed (nu jazz, nu rock, nu metal, and so forth), it remained highly unlikely that a significant part of the relevant public would make such an association in relation to the goods in question.
81 The applicant does not disprove that reasoning by relying before the Court on a ‘consumer video review of the Applicant’s products’ or on that which it itself had filmed ‘for promotional purposes’. Even if such items of evidence were admissible, they would not prove that the meaning which the applicant submits that the term ‘nume’ has is likely to be perceived as the meaning of that term by a significant part of the relevant English-speaking public.
82 Consequently, since at least one of the two signs at issue cannot be associated with a meaning, the Board of Appeal was entitled to conclude, as it did in the contested decision, that there was no conceptual similarity between those signs.
Conclusion regarding the comparison of the signs
83 The applicant maintains that there is only a low degree of visual similarity between the signs at issue and that they are completely dissimilar phonetically and conceptually. It submits that there is therefore only a very low degree of similarity between those signs.
84 It is apparent from the foregoing that the Board of Appeal was right in finding that there is a certain degree of visual similarity between the signs at issue, that those signs are phonetically similar to an average degree and that, since the mark applied for is devoid of any meaning for the relevant English-speaking public, there is no conceptual similarity between the signs.
The likelihood of confusion
85 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
86 In the present case, the applicant submits that, since the mark applied for and the earlier mark differ visually, phonetically and conceptually and the average consumer will, in view of the high level of attention which he displays, be able to distinguish between the goods bearing one or other of those marks, there is no likelihood of confusion between the marks at issue. It maintains that the goods at issue are not general consumer goods, but consumer health goods. It submits that it should also be taken into account that the element ‘derm’ in the earlier mark, which refers to dermatology, has nothing to do with the goods covered by that mark and that that mark has a normal degree of distinctiveness. In conclusion, the applicant submits that there is no likelihood of confusion on the part of the relevant public.
87 In the light of all the considerations set out above, and given that the applicant does not dispute the Board of Appeal’s findings as regards the distinctive character of the mark applied for (see paragraph 16 above), it must be held that the Board of Appeal was right in finding, on the basis of the overall assessment carried out in paragraphs 67 to 72 of the contested decision, that there was a likelihood of confusion between the signs at issue with regard to all of the goods at issue, on the ground, in particular, that those goods were at least similar and that those signs had an identical element in common which would be perceived as such by the relevant public.
88 Consequently, the single plea in law put forward in the application must be rejected and the action must be dismissed in its entirety.
Costs
89 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders MSI Svetovanje, marketing, d.o.o. to pay the costs.
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 24 October 2019.