JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
9 April 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark OCTASA — Earlier national, Benelux and international word marks PENTASA and OCTOSTIM — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑502/12,
Ferring BV, established in Haarlem (Netherlands), represented initially by I. Fowler, Solicitor, A. Renck and J. Fuhrmann, lawyers, and subsequently by I. Fowler, A. Renck and D. Slopek, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Tillotts Pharma AG, established in Ziefen (Switzerland), represented by T. Alkin, Barrister,
ACTION against the decision of the Fourth Board of Appeal of OHIM of 6 September 2012 (Case R 1216/2011-4), concerning opposition proceedings between Ferring BV and Tillotts Pharma AG,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Registry of the General Court on 19 November 2012,
having regard to the response of OHIM lodged at the Registry on 18 February 2013,
having regard to the response of the intervener lodged at the Registry on 27 February 2013,
having regard to the change in the composition of the Chambers of the General Court,
further to the hearing on 28 November 2013,
gives the following
Judgment
Background to the dispute
1 On 20 March 2009, the intervener Tillotts Pharma AG filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign OCTASA.
3 The goods in respect of which registration was sought are in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and, following the limitation made during the proceedings before OHIM, correspond to the following description: ‘Preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 21/2009 of 8 June 2009.
5 On 8 September 2009, the applicant Ferring BV filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.
6 The opposition was based on the following earlier national and Benelux word marks PENTASA:
– Benelux trade mark registration No 377 513 of 1 December 1981 designating, inter alia, ‘pharmaceutical preparations’ in Class 5;
– German trade mark registration No 1 181 393 of 8 October 1991 designating ‘medicines’ in Class 5;
– Portuguese trade mark registration No 218 845 of 12 June 1989 designating ‘pharmaceutical and medical preparations and substances’ in Class 5;
– Danish trade mark registration No VR 02430 1980 of 27 June 1980 designating, inter alia, ‘pharmaceutical preparations to counter autoimmune diseases’ in Class 5;
– Finnish trade mark registration No 94 367 of 1 December 1985 designating ‘pharmaceutical preparations for inflammatory intestinal illnesses’ in Class 5;
– United Kingdom trade mark registration No 1 131 049 of 28 July 1982 designating ‘anti-inflammatory pharmaceutical preparations and substances; enema preparations’ in Class 5;
– Spanish trade mark registration No 1 766 091 of 5 February 1996 designating ‘pharmaceutical products, especially for the treatment of gastroenterological diseases’ in Class 5.
7 The opposition was also based on the following earlier word marks OCTOSTIM:
– international trade mark registration No 605 880 of 28 July 1987, with effect in Bulgaria, the Czech Republic, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Romania, Slovenia and Slovakia and designating, inter alia, ‘pharmaceutical products and substances’ in Class 5;
– Benelux trade mark registration No 430 245 of 7 April 1987 designating, inter alia, ‘pharmaceutical preparations and substances’ in Class 5;
– German trade mark registration No 2 024 737 of 17 November 1992 designating ‘medicines’ in Class 5;
– Finnish trade mark registration No 95 872 designating all goods in Class 5;
– French trade mark registration No 1 537 576 of 22 June 1989 designating ‘medicines, pharmaceutical products for use in human and veterinary medicines’ in Class 5;
– United Kingdom trade mark registration No 1 262 052 of 7 March 1986 designating, inter alia, ‘pharmaceutical products’ in Class 5;
– Greek trade mark registration No 129 507-A of 31 May 1996 designating ‘pharmaceutical preparations’ in Class 5;
– Irish trade mark registration No 175 341 of 27 May 1996 designating ‘pharmaceutical preparations and substances’ in Class 5;
– Portuguese trade mark registration No 246 194 of 16 September 1991 designating ‘pharmaceutical products, namely hormonal peptides’ in Class 5;
– Danish trade mark registration No VR 1986 01124 of 9 May 1986 designating ‘all goods’ in Class 5;
– Swedish trade mark registration No 200 103 of 28 February 1986 designating ‘peptide hormones’ in Class 5.
8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
9 On 5 July 2010, Tillotts Pharma requested proof of genuine use of the earlier trade marks.
10 By letter of 9 November 2010, Ferring produced various documents in order to establish that the earlier trade marks had been put to genuine use for the purposes of Article 42(2) and (3) of Regulation No 207/2009.
11 On 19 April 2011, the Opposition Division rejected the opposition.
12 On 7 June 2011, Ferring filed an appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
13 By decision of 6 September 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It held, in essence, that Ferring had proved genuine use of the earlier trade marks PENTASA only in respect of a pharmaceutical product prescribed for the treatment of diseases of the gastro-intestinal tract and containing mesalazine as its active ingredient, and that the suffix ‘asa’ which formed part of the signs PENTASA and OCTASA was descriptive in relation to that active ingredient, which was also known as 5-aminosalicylic acid and 5-ASA. In view of the descriptive character of the suffix ‘asa’, the Board of Appeal concluded that there was no similarity between the trade marks PENTASA and OCTASA. It thus held that one of the necessary conditions for finding that there is a likelihood of confusion had not been met. In addition, the Board of Appeal held that proof of genuine use of the trade mark OCTOSTIM had been furnished only in respect of a ‘pharmaceutical product to shorten bleeding time and to reduce blood loss, used perioperative[ly] by medical specialists in hospitals where excessive diffuse bleeding occurs, and prescribed for prophylactic use by patients with bleeding disorders’. The Board of Appeal concluded, in particular, that there was no likelihood of confusion between the trade marks OCTOSTIM and OCTASA, given that the similarity between those signs was no more than average, the similarity between the products covered by those marks was weak, the distinctiveness of the earlier trade mark was no more than average and the relevant consumer’s level of attention was high.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the intervener jointly to pay the costs.
15 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 In support of the action, the applicant raises three pleas in law, alleging infringement of Rule 80(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, infringement of Article 8(1)(b) of Regulation No 207/2009, and infringement of Article 8(5) of Regulation No 207/2009.
17 The Court considers it appropriate to examine the second plea — infringement of Article 8(1)(b) of Regulation No 207/2009 — first of all, in particular the first part of that plea, which concerns the question whether the Board of Appeal was right to conclude that there was no likelihood of confusion with regard to the trade marks OCTASA and PENTASA and the goods covered by those marks.
18 In that regard, it can be seen from paragraph 25 of the contested decision that the Board of Appeal began its assessment by analysing whether there was a likelihood of confusion between the Benelux word mark PENTASA — registration No 377 513 — and the mark OCTASA applied for, having regard to the goods covered by those marks. The Board of Appeal concluded that there was no likelihood of confusion because there were no visual, phonetic or conceptual similarities between the signs. Next, in paragraph 48 of the contested decision, the Board of Appeal found that the same conclusion applied with regard to the other trade marks PENTASA, since the signs were identical, the goods covered were either identical or more limited and the evidence provided of genuine use would not have led to another conclusion concerning the goods for which the earlier trade marks were deemed to be registered.
19 It is therefore necessary to assess, first of all, whether the Board of Appeal’s conclusion that there was no likelihood of confusion between the earlier Benelux trade mark and the mark applied for is correct, having regard to the goods covered by those marks.
20 The applicant claims, in essence, that there is a likelihood of confusion between the marks at issue in relation to the goods concerned. It submits that the Board of Appeal’s premiss that the suffix ‘asa’ is descriptive and widely used for the goods in question is incorrect and unsubstantiated. In having artificially split each of the signs into two word elements, namely ‘pent’ and ‘asa’ on the one hand and ‘oct’ and ‘asa’ on the other, the Board of Appeal disregarded the fact that those signs are, overall, visually, phonetically and conceptually similar.
21 OHIM and the intervener contend, in essence, that the Board of Appeal did not err in its comparison of the signs, which are visually, phonetically and conceptually dissimilar. Consumers generally pay greater attention to the beginning of a mark than to the end and, in the present case, it is clear that the beginnings of the signs in question, namely ‘pen’ and ‘oc’, have nothing in common. On the basis of the evidence produced by Ferring itself during the administrative procedure, they submit that the Board of Appeal was right to conclude that the suffix ‘asa’ would be perceived as descriptive by the relevant public.
22 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned 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 designated (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
24 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
25 Furthermore, in order to find that there exists a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that the likelihood exists for the whole of the relevant public. It is sufficient if it exists for a significant part of that public (see, to that effect, judgment of 10 November 2011 in Case T‑22/10 Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), not published in the ECR, paragraphs 120 and 121 and the case-law cited).
The relevant public and its degree of attention
26 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
27 The case-law also states that the relevant public is made up of consumers who are liable to use both the goods covered by the earlier mark and those covered by the mark applied for. As a general rule, however, when the goods covered by one of the marks are included in the wider designation of the other mark, the relevant public is defined by reference to the more specific wording (see judgment of 12 July 2012 in Case T‑517/10 Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), not published in the ECR, paragraph 19 and the case-law cited).
28 Moreover, it is settled case-law 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. First, medical professionals display a high degree of attention when prescribing medicinal products. Secondly, with regard to end-consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products (see judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM — Nycomed (PRAZOL), not published in the ECR, paragraphs 27 and 29 and the case-law cited).
29 As regards the goods to be taken into consideration for the purposes of determining the relevant public, according to case-law, it follows from Article 42(2) and (3) of Regulation No 207/2009 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 a 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 (see, by analogy, Case T‑126/03 Reckitt Benckiser (España) v OHIM — Aladin (ALADIN) [2005] ECR II‑2861, paragraph 45, and RESPICUR, cited in paragraph 26 above, paragraph 23). The active ingredient is not, as a rule, an appropriate criterion for defining a sub-category of pharmaceutical products (see, to that effect, RESPICUR, paragraph 31, and judgment of 16 June 2010 in Case T‑487/08 Kureha v OHIM — Sanofi-Aventis (KREMEZIN), not published in the ECR, paragraph 60).
30 As a preliminary point, as regards the comparison of the earlier Benelux trade mark and the mark applied for, the Board of Appeal’s finding — which is not contested by Ferring — that the relevant territory is Benelux must be upheld in the present case.
31 Next, according to the Board of Appeal’s finding in paragraph 25 of the contested decision, the relevant public consists of medical professionals and patients as the end-users of ‘the goods in question’. As regards ‘the goods in question’, in paragraphs 21 and 22 of that decision the Board of Appeal found, in essence, that Ferring had proved genuine use of the trade marks PENTASA only in respect of ‘a pharmaceutical product prescribed for the treatment of diseases of the gastro-intestinal tract’. Those marks were therefore deemed to be registered only in respect of that very specific product. In addition, it can be seen from paragraph 26 of that decision that, in comparing the goods, the Board of Appeal came to the conclusion that those goods were identical, given that proof of genuine use of the earlier trade mark PENTASA had been furnished only in respect of a ‘pharmaceutical product prescribed for the treatment of diseases of the gastro-intestinal tract’, which was identical to the ‘preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’ covered by the mark applied for.
32 In its assessment of the descriptive character of the suffix ‘asa’, the Board of Appeal came to the conclusion, in essence, in paragraphs 29 and 31 of the contested decision, that the active ingredient of the pharmaceutical products for which Ferring was using the trade mark PENTASA was mesalazine. For the ‘relevant’ pharmaceutical products, which were to be obtained under medical prescription only, the suffix ‘asa’ of the earlier trade mark, describing part of their active ingredient, was descriptive. That was also the case for the suffix ‘asa’ in the mark applied for, given that the functioning of the pharmaceutical products designed to treat the gastro-intestinal tract which were covered by that mark depended on the active ingredient 5-ASA.
33 At the hearing, the applicant claimed, in essence, that the Board of Appeal had thus assessed the descriptive character of the suffix ‘asa’ from the perspective of consumers of an overly narrow category of goods. Neither the earlier trade mark nor the mark applied for covered only pharmaceutical products containing mesalazine as their active ingredient. Given that not all disorders of the gastro-intestinal tract are necessarily serious illnesses, there would be a large group of consumers who would not display a high degree of attention. According to the applicant, not all of the products for which the relevant public must be determined in the present case require a medical prescription.
34 First, it should be observed that it is not clear from the contested decision which category of goods was used by the Board of Appeal in order to determine the relevant public: in paragraph 25 of that decision, the Board of Appeal merely stated that the relevant public consisted of medical professionals and patients as end-users of ‘the goods in question’. In paragraphs 21 and 22 of the contested decision, the Board of Appeal referred to a very specific pharmaceutical product prescribed for the treatment of diseases of the gastro-intestinal tract. Lastly, in paragraphs 29 and 31 of that decision, the Board of Appeal seems to have taken the view that only pharmaceutical products which were designed to treat diseases of the gastro-intestinal tract, contained mesalazine as their active ingredient, and required a medical prescription were relevant.
35 Nor is it clear from the contested decision what level of attention the Board of Appeal attributed to the relevant public: the Board refrained from elaborating on the consequences of its findings that the relevant public consisted of medical professionals and patients as end-users of the goods in question and that the ‘relevant’ pharmaceutical products were to be obtained under medical prescription only.
36 Secondly, the category of goods in respect of which the earlier Benelux trade mark must be deemed to be registered following the request for proof of genuine use and for which the relevant public must be determined does not, in any event, extend beyond pharmaceutical products which are designed to treat diseases of the gastro-intestinal tract in general. The mark applied for covers ‘preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’ in general. Consequently, in the present case, the relevant public does not, in any event, consist of persons other than medical professionals and consumers of pharmaceutical products which are designed to treat diseases of the gastro-intestinal tract in general.
37 However, it is not necessary, in the present case, to rule on the question whether the narrower category of pharmaceutical products which are designed to treat diseases of the gastro-intestinal tract, contain mesalazine as their active ingredient and require a medical prescription — which appears to have been the Board of Appeal’s basis for determining the relevant public — constitutes a legitimate sub-category of goods pursuant to the case-law cited in paragraph 29 above. As can be seen from paragraphs 46 to 71 below, even if the goods to be taken into consideration were to be given such a narrow definition, it would have no effect on the assessment of the lawfulness of the contested decision.
38 Thirdly, pursuant to the case-law referred to in paragraph 28 above, it must be found that the level of attention of the relevant public is generally high in the present case. All pharmaceutical products designed to treat diseases of the gastro-intestinal tract fall within the general category of pharmaceuticals. Even if some diseases of the gastro-intestinal tract should not be regarded as particularly serious, it is still appropriate to consider that the level of attention of consumers purchasing medicines to treat such diseases is higher than the average.
Comparison of the signs
39 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
40 In the present case, in paragraphs 29 to 34 of the contested decision, the Board of Appeal concluded, in essence, that the suffix ‘asa’ was descriptive in relation to the active ingredient mesalazine — synonyms of which were mesalamine, 5-aminosalicylic acid or 5-ASA — contained in the treatments covered by the marks at issue. The trade marks PENTASA and OCTASA shared the descriptive element ‘asa’ which constituted the last section of both marks. The marks differed with regard to their first sections, namely the elements ‘pent’ and ‘oct’. They were thus visually and phonetically dissimilar. Conceptually, in Greek, the ‘penta’ component of the earlier trade mark meant ‘five’, and the ‘octa’ component of the mark applied for meant ‘eight’. In that respect, the marks were conceptually dissimilar. The mere fact that the marks shared the descriptive element ‘asa’ could not render those marks similar from a conceptual point of view.
41 According to the applicant, the signs are visually, phonetically and conceptually similar. It particularly challenges the finding that the suffix ‘asa’ contained in both marks is descriptive.
The descriptive character of the suffix ‘asa’
42 It should be borne in mind that, according to case-law, a sign is descriptive if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (see judgment of 17 October 2012 in Case T‑485/10 MIP Metro v OHIM — J.C. Ribeiro (MISS B), not published in the ECR, paragraph 29 and the case-law cited).
43 Moreover, it can be seen from case-law that the conceptual perception of a word element of a trade mark may vary between medical professionals and patients (see, to that effect, RESPICUR, cited in paragraph 26 above, paragraphs 58 and 59) and between the publics of different Member States (see, to that effect, Case T‑172/05 Armacell v OHIM — nmc (ARMAFOAM) [2006] ECR II‑4061, paragraph 60).
44 In the present case, it is common ground that mesalazine is the active ingredient of the pharmaceutical products in respect of which the applicant is using its earlier trade mark PENTASA. As the applicant emphasised at the hearing, without being contradicted on that point by the other parties, mesalazine is the only name for the active ingredient which appears on the packaging of the products sold under the trade mark PENTASA which were produced before OHIM during the administrative procedure.
45 In order to establish that the suffix ‘asa’ was descriptive in relation to that active ingredient, the Board of Appeal stated, in paragraph 29 of the contested decision, that the active ingredient of the pharmaceutical products for which Ferring was using the trade mark PENTASA was mesalazine. Tillotts Pharma had argued and demonstrated that the general denominations used as synonyms for mesalazine were mesalamine, 5-aminosalicylic acid or 5-ASA. This was confirmed by the publications submitted by Ferring as proof of reputation and also by its use of the trade mark PENTASA in advertising material where that trade mark was displayed in combination with ‘mesalazine 5-ASA’. Next, in paragraph 30 of the contested decision, the Board of Appeal stated that Tillotts Pharma had argued that, besides the product marketed under the trade marks PENTASA, other pharmaceutical products with the same therapeutic indication and active ingredient 5-ASA were marketed by Tillotts Pharma and third parties under names which included the letter combination ‘asa’. This argument was supported by the IMS Health data produced by Ferring. Lastly, in paragraph 31 of the contested decision, the Board of Appeal concluded that it followed that, for all the ‘relevant’ pharmaceutical products, which were to be obtained under medical prescription only, the suffix ‘asa’ of the earlier trade mark, describing part of its active ingredient, was descriptive. That was also the case for the suffix ‘asa’ in the mark applied for, given that that mark covered pharmaceutical products which were designed to treat the gastro-intestinal tract, the functioning of which depended on the active ingredient 5-ASA.
46 Thus, it is clear that the Board of Appeal did not establish the descriptive character of the suffix ‘asa’ from the perspective of the end-users of the goods in question. That finding would apply even if it were necessary to regard the category of pharmaceutical products which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient — which the Board of Appeal appears to have used as a basis for determining the relevant public — as a legitimate sub-category of goods. In that situation, pursuant to the case-law cited in paragraph 27 above, the relevant public would have to be regarded as consisting of — besides medical professionals — end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient.
47 In that regard, it should be noted as a preliminary point that, in reply to a question from the General Court at the hearing, OHIM acknowledged, in essence, that the evidence which the Board of Appeal had relied on in the contested decision to establish the descriptive character of the suffix ‘asa’ essentially concerned the views of medical professionals, not those of end-users.
48 First, it should be noted that the evidence which the Board of Appeal relied on in the contested decision does not show that the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient are aware of the name 5-aminosalicylic acid or of its acronym 5-ASA, or that such users associate those names with the active ingredient mesalazine.
49 In so far as the Board of Appeal found that Tillotts Pharma had demonstrated that the general denominations used as synonyms for mesalazine were mesalamine, 5-aminosalicylic acid or 5-ASA, it can be seen from OHIM’s case-file that, during the administrative procedure, Tillotts Pharma produced extracts in English from two online encyclopaedias, namely Wikipedia and The Free Dictionary (http://medical-dictionary.thefreedictionary.com), which state, inter alia, that 5-aminosalicylic acid is a synonym for the active ingredient mesalazine and that 5-ASA is an acronym of that synonym. However, it should be borne in mind that the relevant territory is Benelux. The extracts in English mentioned above and relied on by the Board of Appeal do not show that, in Benelux, the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient are aware of the name 5-aminosalicylic acid or its acronym 5-ASA, or that they associate those names with the active ingredient mesalazine. In addition, it cannot be argued that the names 5-aminosalicylic acid or 5-ASA are among the basic English words with which consumers not having a thorough knowledge of English are likely to be acquainted.
50 Moreover, it is settled case-law that an extract from Wikipedia lacks certainty as a source of information, since it is drawn from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously (see, to that effect, Case T‑344/07 O2 (Germany) v OHIM (Homezone) [2010] ECR II‑153, paragraph 46, and judgment of 16 November 2011 in Case T‑500/10 Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), not published in the ECR, paragraph 55).
51 In so far as the Board of Appeal held that the claim that the general denominations used as synonyms for mesalazine were mesalamine, 5-aminosalicylic acid or 5-ASA was supported by the publications submitted by Ferring as proof of reputation, it can be seen from OHIM’s case-file that the Board of Appeal was relying on a selection of articles from medical and scientific journals. However, there is no reason to conclude that the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient read such publications, which are addressed to medical professionals. In any event, those publications are written only in English and French. They do not show that the Dutch speakers among those end-users are aware of the name 5-aminosalicylic acid or its acronym 5-ASA, or that such users associate those names with the active ingredient mesalazine.
52 The Board of Appeal also relied on advertising material where the trade mark PENTASA was displayed in combination with ‘mesalazine 5-ASA’. However, there is nothing in OHIM’s case-file to suggest that the material was distributed to the end-users of the goods in question. Paragraph 7 of the contested decision describes that material as leaflets ‘for medical specialists’. In addition, OHIM’s case-file contains advertising material in English and Dutch only. Such material does not show that the French speakers among the end-users of the goods in question are aware of the name 5-aminosalicylic acid or its acronym 5-ASA, or that such users associate those names with the active ingredient mesalazine.
53 Secondly, even assuming that the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient are aware of the name 5-aminosalicylic acid or its acronym 5-ASA and associate those names with the active ingredient mesalazine, there is still no reason to conclude that those end-users will immediately interpret, without further thought, the suffix ‘asa’ as a description of that active ingredient. First of all, the suffix ‘asa’ differs from the acronym 5-ASA as the number 5 and the hyphen are missing. Yet those are two elements which allow 5-ASA to be interpreted as the acronym of a chemical formula and thus a reference to an active medical ingredient. Without those two elements, by contrast, it is unlikely that the end-user will perceive the mere suffix ‘asa’ as being a reference of that kind. Secondly, the suffix ‘asa’ forms part of trade marks which each consist of a single word, namely ‘pentasa’ and ‘octasa’. Thus, any descriptive meaning which that suffix may have is made harder for the end-user to grasp, given that he will have to start by breaking down each of the trade marks — each consisting of a single word — into sections. Thirdly, in order to identify the suffix ‘asa’ as a description of the active ingredient mesalazine, the end-user will thus have to break down the trade marks PENTASA or OCTASA into sections, associate ‘asa’ with 5-ASA, recognise 5-ASA as the acronym of 5-aminosalicylic acid, and be aware that 5-aminosalicylic acid is a synonym for mesalazine. It is therefore necessary to follow a complex line of reasoning which involves a number of stages in order to interpret the suffix ‘asa’ as a reference to mesalazine, which is the only name for the active ingredient which appears on the packaging of products sold under the trade mark PENTASA which were produced before OHIM during the administrative procedure.
54 Thirdly, it is also not possible to establish from the Board of Appeal’s statement in paragraph 30 of the contested decision that other pharmaceutical products with the same therapeutic indication and active ingredient 5-ASA were marketed by Tillotts Pharma and third parties under names which included the letter combination ‘asa’ that the suffix ‘asa’ is descriptive from the perspective of the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient. The mere fact that other pharmaceutical products with the same therapeutic indication and active ingredient 5-ASA are marketed under names which include the letter combination ‘asa’ does not, in itself, permit the conclusion that the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient will immediately interpret, without further thought, the letter combination ‘asa’ as a reference to that active ingredient.
55 Fourthly, contrary to the assertions of OHIM and the intervener, it cannot be established from the need for a medical prescription that the suffix ‘asa’ is descriptive from the perspective of the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient. It has not been established in the present case that medical professionals use the name 5-aminosalicylic acid, the acronym 5-ASA, or the element ‘asa’ with their patients when prescribing them such medicines.
56 Fifthly, in the present case, contrary to the intervener’s submissions during the hearing, it cannot be concluded from the high level of attention of the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient that the suffix ‘asa’ is descriptive from the perspective of those end-users. Since it has not been established that such end-users are aware of the name 5-aminosalicylic acid or its acronym 5-ASA, even with a high level of attention they will not be able immediately to interpret, without further thought, that suffix as a reference to that active ingredient.
57 Sixthly, contrary to the intervener’s assertions, the evidence in OHIM’s case-file does not give rise to a ‘reasonable presumption’ that the suffix ‘asa’ is descriptive from the perspective of the end-users of medicines which are designed to treat diseases of the gastro-intestinal tract and contain mesalazine as their active ingredient. In the light of the foregoing, it must be held that there is nothing in OHIM’s case-file to support a conclusion that such a presumption can be made. Paragraph 28 of the judgment of 31 January 2013 in Case T‑54/12 K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), not published in the ECR, cited by the intervener in support of its arguments, cannot undermine that finding. In that judgment, the General Court approved the Board of Appeal’s finding that the element ‘sport’ was descriptive, or at least highly allusive, in the clothing sector in relation to gymnastic and sporting articles and leather goods, bags and clothing accessories (paragraph 29). That finding was based, inter alia, on the fact that, in that case, the applicant did not dispute that the term ‘sport’ was a basic English word which would be understood by the average consumer in all of the relevant territories (paragraph 26), the fact that it had not provided any information concerning the territory of a Member State where the element ‘sport’ is distinctive or with regard to the goods of which it is not descriptive (paragraph 28), and the previous case-law of the General Court (paragraph 29). However, that line of reasoning clearly cannot be applied to the present case, particularly as neither ‘asa’ nor 5-aminosalicylic acid nor 5-ASA is among the basic English words and expressions with which consumers not having a thorough knowledge of English are likely to be acquainted.
Visual and phonetic comparison of the signs
58 In the light of the foregoing, it must be assessed whether the Board of Appeal’s conclusion that the signs at issue are visually and phonetically dissimilar is correct with regard to the end-users in Benelux of the goods in question.
59 In that regard, it must be found that the first sections of the marks at issue, namely ‘pen’ and ‘oc’, are dissimilar. The last sections of those marks, however, namely ‘tasa’, are identical.
60 Admittedly, the first component of word marks may be more likely to catch the consumer’s attention than the following components. However, that consideration cannot apply in all cases. It cannot, in any event, undermine the principle expressed in the case-law cited in paragraph 39 above that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details (see ARMAFOAM, cited in paragraph 43 above, paragraph 65 and the case-law cited).
61 In the present case, the differences between the first sections of the signs at issue, ‘pen’ and ‘oc’, despite their position at the beginning of the marks, are incapable of negating a certain degree of visual and phonetic similarity in the overall impression given by those signs as perceived by the end-users of the goods in question, for which the descriptive character of the suffix ‘asa’ has not been established. That similarity arises from the fact that, visually, the marks at issue are of a similar length — seven and six letters respectively — and, phonetically, they are identical in length, each having three syllables. The similarity also arises from the fact that the marks are absolutely identical as regards their last sections, namely ‘tasa’, which consist of four letters and two syllables in the same order (see, to that effect, ARMAFOAM, cited in paragraph 43 above, paragraph 66).
62 Accordingly, it must be found that, in view of the end-users in Benelux of the goods in question, the Board of Appeal was wrong to state that there was no visual or phonetic similarity between the signs at issue.
Conceptual comparison of the signs
63 From the perspective of the end-users of the goods in question who do not understand that the suffix ‘asa’ is a reference to mesalazine, neither of the signs at issue, taken as a whole, has any meaning.
64 For those end-users who are also unaware that the beginnings of the signs at issue, namely ‘penta’ and ‘octa’, refer to Greek numbers, the conceptual comparison is neutral. From the perspective of that part of the relevant public, neither of the signs refers to any concept whatsoever.
65 However, some of the end-users will recognise that the beginnings of the signs at issue refer to Greek numbers. For those end-users, the signs at issue are conceptually similar in that they both refer to Greek numbers. Nonetheless, given that the signs at issue refer to different Greek numbers, that conceptual similarity must be held to be weak.
66 As regards OHIM’s argument that different numbers are not conceptually similar, the following points should be noted.
67 It follows from Case T‑472/08 Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑3907, paragraph 96, that, in certain circumstances, different numbers may be held to be conceptually similar if they share common elements such as, in that case, in which the marks at issue included the elements ‘51’ and ‘61’ respectively, the number of digits and the digit 1 of the units.
68 In the present case, the fact that numbers are involved is not the only way in which the signs at issue are conceptually similar — there is also the fact that the numbers are in Greek, a language which is not normally spoken in Benelux. That fact is sufficient to support a finding that there is a weak conceptual similarity between the signs.
69 However, the applicant’s argument that the signs are highly similar conceptually as a result of the reputation which it claims is enjoyed by the earlier trade mark must be rejected. The degree of distinctiveness of the earlier trade mark is an element to be taken into account in the context of the global assessment of the likelihood of confusion. However, it is not appropriate to take the degree of distinctiveness of that trade mark into account at the stage of assessing the similarity of the signs (see, to that effect, Joined Cases T‑5/08 to T‑7/08 Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) [2010] ECR II‑1177, paragraph 65 and the case-law cited).
Conclusion
70 It is important to bear in mind the case-law referred to in paragraph 25 above, pursuant to which, in order to find that there exists a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that the likelihood exists for the whole of the relevant public. It is sufficient if it exists for a significant part of that public.
71 In the present case, the end-users in Benelux for whom there exists a certain degree of visual and phonetic similarity between the signs at issue constitute a significant part of the relevant public. For that part of the public, either the conceptual comparison is neutral, or there is a weak conceptual similarity between those signs. The Board of Appeal therefore erred in a manner liable to entail the annulment of the contested decision by finding that the earlier Benelux trade mark and the mark applied for were dissimilar, by holding that, as a result, one of the necessary conditions for finding that there is a likelihood of confusion had not been met, and by refraining from carrying out a global assessment of the likelihood of confusion, taking into account all factors relevant to the circumstances of the case. There is, accordingly, no need to rule on the question whether the Board of Appeal’s conclusion that the suffix ‘asa’ is descriptive and that there is no similarity between the signs at issue is correct with regard to medical professionals in Benelux.
72 In view of the fact that the Board of Appeal’s error concerning the comparison of the earlier Benelux trade mark and the mark applied for in relation to the goods covered by those marks is enough to entail the annulment of the contested decision, there is also no need to rule on the descriptiveness of the suffix ‘asa’ or on the similarity of the signs from the perspective of the relevant publics in the other Member States concerned. In any event, it is clear that the findings in paragraphs 46 to 62 above that the Board of Appeal did not establish the descriptive character of the suffix ‘asa’ from the perspective of the end-users of the goods in question and that there is a certain degree of visual and phonetic similarity between the signs at issue also apply to the relevant publics of the other Member States concerned. In that regard, concerning the observations set out in paragraphs 48 to 52 above, the documents drawn up in English, French and Dutch on which the Board of Appeal relied in the contested decision do not show that German, Portuguese, Danish, Finnish and Spanish end-users of the goods in question are aware of the name 5-aminosalicylic acid or its acronym 5-ASA, or that such users associate those names with the active ingredient mesalazine. In addition, as regards the observations set out in paragraph 54 above, the applicant rightly submits that no evidence was submitted during the administrative procedure that other pharmaceutical products with the same therapeutic indication and active ingredient 5-ASA were being marketed under names including the letter combination ‘asa’ in Portugal, Denmark and Finland. Lastly, the findings in paragraphs 63 to 69 above concerning the conceptual comparison of the signs also apply to the relevant publics of the other Member States concerned.
73 Consequently, the first part of the second plea in law must be upheld and the contested decision must be annulled on that basis, without there being any need to examine the other arguments and pleas in law raised by the applicant.
Costs
74 Under Article 87(2) 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. In addition, under that provision, where there are several unsuccessful parties the Court is to decide how the costs are to be shared.
75 In the present case, since OHIM and the intervener have been unsuccessful, they must, in accordance with the forms of order sought by the applicant, be ordered to pay, in addition to their own costs, the costs incurred by the applicant.
76 As regards how the costs incurred by the applicant are to be shared, it is appropriate to order OHIM and the intervener each to pay half of those costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 September 2012 (Case R 1216/2011-4);
2. Orders OHIM to bear its own costs and to pay half of the costs incurred by Ferring BV;
3. Orders Tillotts Pharma AG to bear its own costs and to pay half of the costs incurred by Ferring.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 9 April 2014.
[Signatures]
* Language of the case: English.