Alfa Wassermann SpA (AW) v European Union Intellectual Property Office (T-85/15)

Contents

Judgment of the General Court (Second Chamber)16 May 2017^note(EU trade mark — Opposition proceedings — Application for EU word mark YLOELIS — Earlier EU word mark YONDELIS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)In Case T‑85/15,Alfa Wassermann SpA (AW), established in Alanno (Italy), represented by M. Best, U. Pfleghar and S. Schäffner, lawyers, authorised to replace Alfa Wassermann Hungary Kft.,vEuropean Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,Pharma Mar, SA, established in Colmenar Viejo (Spain), represented by N. González-Alberto Rodríguez, lawyer,THE GENERAL COURT (Second Chamber),composed of M. Prek, President, E. Buttigieg and B. Berke (Rapporteur), Judges,Registrar: E. Coulon,having regard to the application lodged at the Court Registry on 19 February 2015,having regard to the response of EUIPO lodged at the Court Registry on 27 May 2015,having regard to the response of the intervener lodged at the Court Registry on 28 May 2015,having regard to the reply lodged at the Court Registry on 1 September 2015,having regard to the rejoinder lodged at the Court Registry on 24 November 2015,having regard to the order of 13 February 2017 authorising Alfa Wassermann to replace Alfa Wassermann Hungary,having regard to the fact that no request for a hearing was submitted by the main parties within three weeks of 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

1On 25 May 2012, Alfa Wassermann Hungary Kft., substituted under leave of the Court by the applicant, Alfa Wassermann SpA (AW), 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).

2Registration as a mark was sought for the word sign YLOELIS.

3The goods in respect of which registration was sought are in, inter alia, following the restriction made during the proceedings before EUIPO, 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 correspond to the following description: ‘Pharmaceutical products and medicines not for use in oncology’.

4The EU trade mark application was published in Community Trade Marks Bulletin No 120/2012 of 27 June 2012.

5On 6 September 2012, the intervener, Pharma Mar, SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6The opposition was based on the following earlier marks:— EU word mark YONDELIS, registered on 10 October 2005 under the number 2408003, covering, inter alia, goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary products and preparations for use in oncology’;— the EU figurative mark reproduced below, registered on 4 August 2005 under the number 2517597, covering, inter alia, the same goods as the earlier word mark YONDELIS:

7The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8On 24 February 2014, the Opposition Division upheld the opposition, finding a likelihood of confusion between the mark applied for and the earlier word mark. The opposition having been upheld on that basis, the Opposition Division did not assess the likelihood of confusion between the mark applied for and the earlier figurative mark.

9On 23 April 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.

10By decision of 18 December 2014 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, it found that:— the earlier mark had been used in the European Union during the reference period for goods in Class 5;— the relevant public, composed of health care professionals and cancer patients, were well informed and particularly attentive;— the goods covered by the marks at issue were similar;— the signs were visually and phonetically similar and had no specific meaning in any language;— there was a likelihood of confusion between the signs at issue for the relevant public, even if there was a high level of attention.

Forms of order sought

11The applicant claims that the Court should:— annul the contested decision and the decision of the Opposition Division;— reject the opposition in its entirety;— order EUIPO and the intervener to pay the costs.

12EUIPO contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

13The intervener contends that the Court should:— dismiss the action;— order the applicant to pay the costs.

Law

14As regards, at the outset, the general reference made by the applicant to the arguments put forward during the proceedings before EUIPO, it should be noted that, under Article 177(1) of the Rules of Procedure of the General Court, an application lodged in an action brought against EUIPO must include a brief statement of the grounds relied on. Although, in that regard, specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself. It follows that the application, to the extent that it refers to the written submissions before EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (judgment of 25 November 2015, Asafi v OHIM — Hd1 (JUICE masafi), T‑248/14, not published, EU:T:2015:880, paragraph 14).

15In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16Under this plea, the applicant submits, in essence, that the Board of Appeal was wrong to find that:— the goods in question were similar, given that the goods protected by the earlier mark were exclusively intended for use in oncology, while those covered by the mark applied for were exclusively not for use in oncology. Accordingly, the goods differed as regards their respective end users, method of use and intended purpose. It was therefore impossible that someone ordering a YLOELIS preparation would be given a YONDELIS preparation;— the signs were visually similar, given that the beginnings of the signs at issue were different and the similar number of letters of which they were comprised cannot be sufficient to find that they were similar;— the signs were phonetically similar, given that their first three syllables are pronounced differently and that there is a different rhythm and structure between the signs and in the number of syllables. In that regard, the general rules of pronunciation applicable, in particular, in English and Spanish, created a difference in the pronunciation of the letter ‘y’ depending on whether it is followed by a vowel or a consonant, which should be sufficient evidence of the difference between the signs without the applicant being required to indicate the rules of pronunciation relating to the other official languages of the European Union;— there was a likelihood of confusion between the marks at issue by disregarding, inter alia, the high level of attention of the relevant public.

17EUIPO and the intervener dispute those arguments.

18Article 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, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there is 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.

19According 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. Furthermore, the likelihood of confusion must be assessed globally, in accordance with the relevant public’s perception of the signs at issue and the goods or services in question, and taking account of all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (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).

20Furthermore, the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The wording of Article 8(1)(b) of Regulation No 207/2009 (‘… there exists a likelihood of confusion on the part of the public’) shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, judgment of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 32 and the case-law cited).

21Where the protection of the earlier trade mark extends to the whole 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 within that territory. However, it must be borne in mind that, in order 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 No 207/2009 exists in part of the European Union (see, to that effect, 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).

22It is in the light of those considerations that it must be assessed whether in the present case there is a likelihood of confusion between the two marks within the meaning of Article 8(1)(b) of Regulation No 207/2009.

The relevant public

23The Board of Appeal took the view, in paragraphs 28 and 29 of the contested decision, that the relevant public was comprised of oncologists, doctors and EU health care professionals and cancer patients in the European Union. That definition, which, moreover, is not disputed by the parties, must be confirmed in light of the fact that the earlier mark is an EU trade mark and that the goods in question are medicines for treating cancer. The Board of Appeal was also correct to find, in paragraph 28 of the contested decision, that the level of attention of the relevant public was high.

Comparison of the goods

24According to settled case-law, in assessing the similarity of the goods or services at issue, all of 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).

25Goods or services which are complementary are those with a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

26In the present case, the earlier mark covers goods corresponding to the description ‘Pharmaceutical and veterinary products and preparations for use in oncology’ (see paragraph 6 above), while the mark applied for covers goods corresponding to the description ‘Pharmaceutical products and medicines not for use in oncology’ (see paragraph 3 above).

27The Board of Appeal found, in paragraph 34 of the contested decision, that the goods in question were similar in so far as the specification of the medicine covered by the mark applied for was not worded in such a way as to exclude medicines for treating side effects in cancer patients.

28It must be stated that, as the intervener and EUIPO submit, the goods covered have the same nature (pharmaceutical products for human use), purpose or intended use (treatment of human health problems), consumers (medical professionals and patients) and distribution channels (pharmacies and hospital supply services). They therefore have significant points of similarity (see, to that effect, judgment of 24 May 2011, Longevity Health Products v OHIM — Tecnifar (E-PLEX), T‑161/10, paragraph 23).

29While their therapeutic indications are different, the goods in question have however a complementary connection, in the sense that one of those goods is important or indispensable for the use of the other. The European Medicines Agency stated that a patient being treated with YONDELIS may need other medicines to treat the side effects of that medication. Since the specification of the good covered by the mark applied for is not worded in such a way as to exclude those medicines from treating such side effects, it is not inconceivable that the mark applied for covers pharmaceutical products or medicines the use of which is closely connected with oncological treatment under the earlier mark or indeed which are administered at the same time as the medicine covered by the earlier mark, but do not directly treat cancer.

30In those circumstances, it must be held that the similarities between the goods outweigh the differences and to conclude that there is therefore considerable similarity between the goods in question (see, to that effect, judgment of 11 June 2009, Bastos Viegas v OHIM — Fabre Médicament (OPDREX), T‑33/08, not published, EU:T:2009:197, paragraph 25). That finding cannot be called into question by the applicant’s claims.

31First, as the intervener and EUIPO correctly submit, the fact that the goods covered by the earlier mark are expressly excluded from the list of goods covered by the trade mark application is not sufficient, in itself, to exclude any similarity of the goods in question and, therefore, to exclude any likelihood of confusion (see, to that effect, judgment of 24 May 2011, E-PLEX, T‑161/10, not published, EU:T:2011:244, paragraph 22 and the case-law cited).

32Secondly, as the intervener and EUIPO correctly submit, the goods do not differ in their intended purpose, method of use and end users, given that it cannot be excluded that they are complementary in so far as the goods covered by the mark applied for can be used to limit the side effects of the goods covered by the earlier mark. Moreover, that complementarity, referred to in paragraph 34 of the contested decision, has never been disputed by the applicant (see, to that effect, judgment of 11 November 2009, Bayer Healthcare v OHIM — Uriach-Aquilea OTC (CITRACAL), T‑277/08, not published, EU:T:2009:433, paragraph 47).

33Thirdly, as the intervener correctly submits, the applicant’s argument that the goods in Class 5 cannot all be considered to be similar does not invalidate that conclusion, since, in the contested decision, the Board of Appeal did not base its finding relating to the similarity of the goods at issue on the fact that those goods were in Class 5, but rather on their complementarity.

34Fourthly, as EUIPO correctly submits, the fact that it is practically impossible that someone ordering an YLOELIS preparation in a pharmacy would be given a YONDELIS preparation must be taken into account in the assessment of the likelihood of confusion and not at the stage of the comparison of the goods. Nonetheless, it must be stated, in the alternative, that, with regard to the analysis referred to in paragraph 28 above of the factors which should be taken into account in order to assess the similarly and complementarity of the goods in question, which was established in paragraph 29 above, the similarities between the goods outweigh the differences. Accordingly, the applicant’s argument is not capable of calling into question the finding concerning the similarity of the goods.

35Consequently, the Board of Appeal did not err in finding that the goods in question were similar.

Comparison of the signs

36According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).

37The Board of Appeal concluded, in paragraph 42 of the contested decision, that the signs to be compared were similar overall.

38As regards the visual aspect, it is undisputed that the mark applied for reproduces, in the same sequence, six of the eight letters of the earlier mark – namely, ‘y’ and ‘o’ then ‘e’, ‘l’, ‘i’ and ‘s’ – which is, in principle, an indication that the two marks are similar (see, to that effect, judgment of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83). Furthermore, the marks at issue are composed of a single word of similar length (seven and eight letters) and each of those marks begins with the letter ‘y’ and ends with the sequence of letters ‘elis’. The main difference is in the part which follows the initial letter ‘y’ of the marks at issue, namely the series of letters ‘l’ and ‘o’ in the mark applied for and the series of letters ‘o’, ‘n’ and ‘d’ in the earlier mark.

39In those circumstances, the elements that differentiate the signs at issue are not capable of nullifying the common features that they possess. Consequently, the Board of Appeal correctly found that the signs were similar. That finding cannot be called into question by the various arguments put forward by the applicant.

40First, for the reasons set out in paragraphs 38 and 39 above, the applicant’s argument as regards the length of the marks cannot call that finding into question.

41Secondly, as the intervener and EUIPO correctly submit, it cannot be accepted that there is a material difference in the beginning of the marks at issue, between the groups of letters ‘yond’ and ‘ylo’. Those marks are identical for two of the first three or four letters respectively, the first of which — ‘y’ — attracts most of the consumer’s attention. Furthermore, the difference relating to the parts ‘ond’ and ‘lo’, which does not relate to the first part of the signs at issue, is not sufficient to nullify the visual similarity produced by the first letter ‘y’ and by the group of letters ‘elis’ at the end of the signs.

42Consequently, the Board of Appeal did not err in finding that the signs at issue were visually similar.

43Phonetically, the signs at issue could be pronounced in a number of ways. The phonetic similarity is weakest for a public speaking a language in which, under its rules of pronunciation, the letter ‘y’ is pronounced differently, namely, either as ‘y’ or as ‘i’, depending on its position in the word and the letter which follows it. In accordance with those rules, the earlier mark is pronounced in three syllables — ‘ion de lis’ — while the mark applied for is pronounced in four syllables — ‘i lo e lis’. It must be stated that, even in that case, there is a certain phonetic similarly between the signs, the ends of which are pronounced identically and the beginnings of which are pronounced similarly, in light of the presence of the vowel ‘o’ in each of the signs. The difference relating to the pronunciation of the letter ‘y’ is not sufficient to nullify the phonetic similarity produced by the series of vowels ‘o’, ‘e’ and ‘i’, especially given that the tonic accent does not fall on the ‘i’ element of the mark applied for. The phonetic similarity is even higher in the case where the relevant public does not perceive a relative difference between the pronunciations of the letter ‘y’ in the two signs.

44Furthermore, contrary to what the applicant essentially alleges, the pronunciation of the letter ‘y’ in the earlier mark does not differ in all circumstances from that of the mark applied for. In that regard, for example, as the Opposition Division showed, in Finnish, the letter ‘y’ is pronounced as an individual syllable in both marks, which is moreover not disputed by the applicant. In addition, as the intervener submitted, in a number of languages of the European Union, such as Portuguese, the letters ‘i’ and ‘y’ are pronounced identically, which is not disputed by the applicant either.

45It follows from the foregoing that the signs at issue have, overall, a phonetic similarly, even where the letter ‘y’ is pronounced differently, and that the Board of Appeal was therefore correct to conclude, in paragraphs 40 and 42 of the contested decision, that the signs were phonetically similar.

46Conceptually, as the Board of Appeal correctly found in paragraph 40 of the contested decision, neither mark has any specific meaning in any language. Consequently, the conceptual comparison is neutral.

47Taking account of the visual and phonetic similarity between the signs at issue, as assessed in paragraphs 38 to 45 above, and the neutrality of the conceptual comparison, it must be concluded that those signs are similar.

The likelihood of confusion

48A 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).

49Furthermore, it is clear from settled case-law that a likelihood of confusion for part of the relevant public suffices for registration of the mark applied for to be refused (see judgment of 14 December 2006, VENADO with a frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

50In the present case, as regards the distinctiveness of the earlier mark, the Board of Appeal correctly found, in paragraph 45 of the contested decision, that the mark was distinctive since it contained no allusive reference to the characteristics of the goods protected by the earlier mark, a fact which, moreover, is not disputed by the parties.

51As regards the level of attention of the relevant public, the Board of Appeal correctly found, in paragraph 28 of the contested decision, that the relevant public was well informed and particularly attentive and circumspect, a fact which, moreover, is not disputed by the parties either.

52Taking account of the similarity of the goods in question and the signs at issue, as established in paragraphs 35 to 47 above, as well as the distinctiveness of the earlier mark, there is a likelihood of confusion, even in the case of a high level of attention on the part of the relevant public. That finding cannot be called into question by the various arguments put forward by the applicant.

53First, as the intervener and EUIPO submit, in the present case, the high level of attention of the relevant public, which was consistently taken into account, is not, in itself, sufficient, in light of the other relevant factors listed in paragraph 52 above, to exclude any likelihood of confusion.

54Second, as the intervener and EUIPO correctly submit, the applicant’s claim that it was impossible that someone ordering a YLOELIS preparation in a pharmacy would be given a YONDELIS preparation is irrelevant for the assessment of whether the relevant public could believe that those two goods derive from the same undertaking or economically-linked undertakings on account of their complementarity. In the present case, the likelihood of confusion for health care professionals and cancer patients does not take the form of the likelihood that they might confuse the two goods, but of the likelihood they could wrongly believe that the medication YONDELIS, administered in order to treat cancer, and the product YLOELIS, administered in order to treat the side effects of treatment with YONDELIS, are goods marketed by the same undertaking.

55Consequently, it must be stated that the Board of Appeal correctly found that there was a likelihood of confusion on the part of the relevant public.

56Accordingly, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded, as must the action in its entirety, without it being necessary to give a ruling on the admissibility of the applicant’s head of claim requesting that the Court reject the opposition in its entirety (judgment of 22 May 2008, NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, not published, EU:T:2008:163, paragraph 70; see also, to that effect, judgment of 15 October 2009, Commission v Portugal, C‑30/09, not published, EU:C:2009:636, paragraph 81).

Costs

57Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

Operative part

On those grounds,THE GENERAL COURT (Second Chamber)hereby:

1.Dismisses the action;

2.Orders Alfa Wassermann SpA (AW) to pay the costs.

Delivered in open court in Luxembourg on 16 May 2017.