Cara Therapeutics v EUIPO - Gebro Holding (KORSUVA) (EU trade mark - Judgment) [2021] EUECJ T-584/20 (08 September 2021)

Judgment Background to the dispute On 16 February 2018, the applicant, Cara Therapeutics, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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). Registration as a mark was sought for the word sign KORSUVA. 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 correspond to the following description: ‘Pharmaceutical preparations for the treatment of pruritus; pharmaceutical preparations for the treatment of pain’. The trade mark application was published in European Union Trade Marks Bulletin No 2018/055 of 20 March 2018. On 19 June 2018, the intervener, Gebro Holding GmbH, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier Austrian word mark AROSUVA, which was filed on 15 April 2016, registered on 27 July 2016 and covers goods in Class 5 corresponding to the following description: ‘Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. On 9 September 2019, the Opposition Division rejected the opposition in its entirety. It found, first, that the goods at issue were identical. Secondly, it took the view that the relevant public in Austria consisted of the general public and of the professional public, such as physicians, which had a high level of attention. Thirdly, it found that the signs at issue were visually and phonetically similar to a low degree. In view of those factors and since the earlier mark had an average degree of inherent distinctiveness, the Opposition Division concluded that there was no likelihood of confusion. On 30 October 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By decision of 3 July 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the appeal and annulled the Opposition Division’s decision. In particular, it found, first, that the relevant territory was Austria and that the relevant public consisted of the general public and of the professional public in the medical and pharmaceutical fields, which had a high or heightened level of attention. Secondly, it pointed out that the goods at issue were identical. Thirdly, as regards the comparison of the signs at issue, it found that those signs were visually and phonetically similar to an average degree. From a conceptual standpoint, it took the view that it was not possible to carry out a comparison since neither of those signs had any meaning for the Austrian public. Fourthly, it found that the earlier mark had a normal degree of inherent distinctive character. Consequently, it found that there was a likelihood of confusion between the marks at issue, in accordance with Article 8(1)(b) of Regulation 2017/1001. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – uphold the Opposition Division’s decision; – allow the mark applied for to proceed to registration; – order EUIPO and the intervener to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends, in essence, that the Court should: – dismiss the action; – order the applicant to pay the costs as regards the costs which the intervener incurred before the Board of Appeal and the Court. Law In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It criticises the Board of Appeal for having concluded that there is a likelihood of confusion between the marks at issue. In particular, it disputes the findings relating to the assessment of the similarity between the signs at issue and the global assessment of the likelihood of confusion. EUIPO and the intervener dispute the applicant’s arguments. 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. 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). 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). The relevant public As regards the definition of the relevant public and its level of attention, the Board of Appeal pointed out that, as the earlier mark was Austrian, the relevant public was the Austrian public (paragraph 8 of the contested decision), that the goods in Class 5 were aimed both at the general public and at professionals in the medical and pharmaceutical fields and that they had a high, or even heightened, level of attention as regards pharmaceutical products, whether or not issued on prescription, since those products affected their state of health (paragraphs 9 and 10 of that decision). The applicant does not dispute that definition of the relevant public and its level of attention. Moreover, there is nothing in the case file to call those findings into question. The comparison of the goods In the present case, the Board of Appeal found that the goods at issue were identical. The applicant does not dispute that assessment. Moreover, there is nothing in the case file to call it into question. The comparison of the signs at issue The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). It is in the light of those principles that it must, having regard to the arguments of the parties, be examined whether the similarity between the signs at issue was correctly assessed in the contested decision. The visual similarity From a visual standpoint, the Board of Appeal found, in paragraph 16 of the contested decision, that the signs at issue consisted of seven letters, six of which they had in common, namely ‘o’, ‘r’, ‘s’, ‘u’, ‘v’ and ‘a’, that the last four letters, namely ‘s’, ‘u’, ‘v’ and ‘a’, were placed in the same order, that the second and third letters, ‘r’ and ‘o’, were in inverted order and that those signs differed only in their first letters, namely ‘a’ or ‘k’. However, it found that, taking into account that consumers only rarely have the chance to make a direct comparison between the marks, those differing letters were insufficient to counterbalance the visual similarity created by all the other identical letters. The Board of Appeal therefore concluded that there was an average degree of visual similarity. The applicant disputes that assessment. The applicant submits that the Board of Appeal erred in attaching too much importance to the identical number of letters and the inversion of the two letters in the middle, thus disregarding the overall impression created by the signs at issue. Furthermore, it argues that the differences between the initial parts of those signs are of importance. Consequently, it submits that those signs are visually similar to a low degree. In that regard, it must be stated that it is true, as the applicant submits, that, according to the case-law, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two marks at issue have the same number of letters (judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL) , T‑402/07, EU:T:2009:85, paragraph 82). However, it is also apparent from the case-law relating to word marks that what matters in the assessment of the visual similarity between such marks is the presence, in each of them, of several letters in the same order (judgment of 25 March 2009, ARCOL , T‑402/07, EU:T:2009:85, paragraph 83). Consequently, the presence in each of the word marks of several letters in the same order may be of some importance in the assessment of the visual similarities between those signs (see, to that effect, judgment of 12 May 2016, Red Lemon v EUIPO – Lidl Stiftung (ABTRONIC) , T‑643/14, not published, EU:T:2016:294 , paragraph 35 and the case-law cited). In the present case, it must be stated, as the Board of Appeal rightly pointed out, that the signs at issue consist of seven letters, six of which they have in common and four of which are placed in the same order. Furthermore, the second and third letters of those signs are merely inverted, which may easily go unnoticed by the relevant public, in the light, in particular, of the fact that those signs may not be compared side by side and that that public will have only an imperfect recollection of the signs concerned. The only different letter is that at the beginning of the signs at issue. Although it is true that the relevant public will generally pay greater attention to the beginnings of word marks than to their ends, that does not mean that the other elements or the other parts are irrelevant and that those signs cannot be considered to be visually similar (see, to that effect, judgment of 9 December 2020, Almea v EUIPO – Sanacorp Pharmahandel (Almea) , T‑190/20, not published, EU:T:2020:597 , paragraph 35 and the case-law cited). Although the initial part of word marks may be more likely to hold the relevant public’s attention than the following parts, that consideration cannot hold good in all cases. In the present case, since the other letters are identical and four letters are in the same order, the difference created by the differing first letters of the signs at issue is not sufficient to offset the visual similarity resulting from the presence in common of the other letters. In so far as the applicant complains that the Board of Appeal erred in not taking into account the order of 4 March 2010, Kaul v OHIM (C‑193/09 P, not published, EU:C:2010:121), and the judgment of 21 September 2017, Novartis v EUIPO – Meda (Zimara) (T‑238/15, not published, EU:T:2017:636), it is sufficient to point out that the comparison between two signs must be carried out according to the particular circumstances of each case, with the result that a comparison with the specific degree of similarity found to exist between other signs in other cases is of only limited value (judgments of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI) , T‑559/13, not published, EU:T:2015:353 , paragraph 83, and of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp) , T‑135/14, not published, EU:T:2016:69 , paragraph 158). Consequently, the Board of Appeal was fully entitled to find that the signs at issue were similar to an average degree. The phonetic similarity From a phonetic standpoint, the Board of Appeal found, in paragraph 21 of the contested decision, that the signs at issue were the same length, that they contained six identical sounds and that the earlier mark was pronounced ‘a-ro-su-va’ and the mark applied for was pronounced ‘kor-su-va’, resulting in a similar rhythm and intonation. According to the applicant, the signs at issue differ in their syllabic structure resulting in a different rhythm and intonation. It also observes that the consonants and vowels are positioned differently in those signs. Although, according to the case-law referred to in paragraph 29 above, consumers will generally pay greater attention to the beginning of a word mark than to its end, since the initial part of such a mark normally has a greater impact, both visually and phonetically, than the final part (see also judgment of 19 June 2018, Damm v EUIPO – Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER) , T‑859/16, not published, EU:T:2018:352 , paragraph 68 and the case-law cited), and although, in the present case, the differences are in the initial parts of the marks at issue, it must be held that those differences are not sufficient to counteract the phonetic similarity of the signs at issue. In that regard, it must be stated, as pointed out by EUIPO, that, although the signs at issue contain a different number of syllables, namely four and three respectively, that cannot automatically preclude the finding that there is an average degree of similarity between them. Furthermore, those signs coincide in six letters out of seven and all the identical letters are clearly audible when those signs are pronounced. In addition, the first syllable in the earlier mark is limited to a single vowel, ‘a’, and thus has less of an impact on the phonetic impression created by that mark than the other syllables in the mark. In addition, the last two syllables, ‘su’ and ‘va’, of the signs concerned are identical. Consequently, it must be held that the elements of similarity between the signs at issue outweigh the elements of dissimilarity and that the Board of Appeal was entitled to find, without making any error, that those signs were similar to an average degree. The conceptual similarity From a conceptual standpoint, the Board of Appeal found, in paragraph 24 of the contested decision, that neither of the signs at issue had any meaning for the relevant public. That finding, which the applicant does not, moreover, dispute, must be upheld. The global assessment of the likelihood of confusion In paragraph 30 et seq. of the contested decision, the Board of Appeal found that, in the light of the identity of the goods at issue, of the finding that the signs at issue were visually and phonetically similar to an average degree and of the finding that the earlier mark had an average degree of distinctiveness, there was, in the relevant territory, a likelihood of confusion on the part of the relevant public, even though that public’s level of attention was above average. The applicant submits that, in the light of the differences between the signs at issue, the Board of Appeal erred in concluding that a significant part of the relevant Austrian public could be led to believe that the goods come from the same undertaking or from economically related undertakings. In that regard, it must be borne in mind that 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, 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 74). In the present case, as is clear from the above considerations, and bearing in mind, as regards the inherent distinctiveness of the earlier mark, that the Board of Appeal was right in finding that it was average in degree since that mark had no meaning in relation to the goods at question (see paragraph 27 of the contested decision), a finding which is not, moreover, disputed by the applicant, it must be held that the Board of Appeal rightly found that there was a likelihood of confusion. In order to reach that conclusion, the Board of Appeal duly took into consideration, as part of a global assessment taking into account, inter alia, the level of attention of the relevant public, the identity between the goods at issue and the at least average degree of visual and phonetic similarity between the signs at issue. Furthermore, in so far as the applicant claims that, since the relevant public’s level of attention is above average, that implies that, for a likelihood of confusion to exist, there must also be a high degree of similarity between the signs, it must be borne in mind that it has already been held that a high level of attention on the part of that public does not automatically make it possible to conclude that there is no likelihood of confusion, since all the other factors must be taken into consideration (see, to that effect, judgments of 28 April 2016, Zehnder Group International v EUIPO – Stiebel Eltron (comfotherm) , T‑267/14, not published, EU:T:2016:252 , paragraph 72 and the case-law cited, and of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO) , T‑189/16, not published, EU:T:2017:488 , paragraph 87). In that regard, it must be pointed out that, in the light of the identity of the goods at issue and the similarity that exists between the signs at issue, namely the average degree of visual and phonetic similarity (see paragraphs 31 and 36 above) and the lack of any possible conceptual comparison (see paragraph 38 above), the fact that that public consists of persons whose level of attention may be considered to be high is not sufficient to exclude the possibility that that public might believe that the goods concerned come from the same undertaking or, as the case may be, from economically linked undertakings (see judgment of 1 July 2008, Apple Computer v OHIM – TKS-Teknosoft (QUARTZ) , T‑328/05, not published, EU:T:2008:238, paragraph 59 and the case-law cited). It follows from the foregoing that the Board of Appeal did not make an error of assessment in finding that there was, in the present case, a likelihood of confusion on the part of the relevant public. Consequently, the single plea must be rejected and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second and third heads of claim. Costs 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 relating to the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Furthermore, as regards the costs which the intervener incurred before the Board of Appeal, it is sufficient to point out that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part in the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original) , T‑459/18, not published, EU:T:2019:119 , paragraph 194). On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Cara Therapeutic, Inc. to pay the costs. Tomljenović Schalin Nõmm Delivered in open court in Luxembourg on 8 September 2021. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . 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