Fidia farmaceutici v EUIPO - Vorwarts Pharma (HYALERA) (EU trade mark - Judgment) [2024] EUECJ T-497/23 (18 September 2024)

Judgment By its action under Article 263 TFEU, the applicant, Fidia farmaceutici SpA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2023 (Case R 230/2023-5) (‘the contested decision’). Background to the dispute On 11 February 2020, the intervener, Vorwarts Pharma sp. z o.o., filed an application for registration of an EU trade mark with 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 HYALERA. 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, in particular medications for people; dietetic preparations for medical purposes; energising supplements used in prophylaxis and in convalescence for medical purposes; dietary supplements for increasing the effectiveness of treatments; preparations for supplementing the body with essential vitamins and microelements; dietetic foods adapted for medical use; dietetic foods adapted for medical use’. On 28 June 2020, the applicant filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods referred to in paragraph 4 above. The opposition was based on, inter alia, the Italian word mark HYAL, which was registered on 26 October 2018 under the number 2018000005882 and covers, inter alia, goods in Class 5 corresponding to the following description: ‘Pre-filled syringes for medical purposes; medical preparations; medical substances; dermatological pharmaceutical substances; pre-filled syringes for medical purposes (containing pharmaceutical preparations)’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation 2017/1001. On 28 November 2022, the Opposition Division upheld the opposition in its entirety in so far as it was based on the earlier Italian mark HYAL. On 27 January 2023, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Opposition Division’s decision. By the contested decision, the Board of Appeal annulled the Opposition Division’s decision and remitted the case to the Opposition Division for it to examine the opposition further on the basis of the other earlier rights which had been relied on by the applicant. In essence, the Board of Appeal found that, in the light of the low degree of visual, phonetic and conceptual similarity between the signs at issue, the fact that those signs had the weakly distinctive and non-dominant element ‘hyal’ in common, the weak distinctive character of the earlier mark and the high level of attention of the relevant public, any likelihood of confusion could be excluded, even with regard to identical goods. Lastly, the Board of Appeal found that there was no likelihood of confusion even with respect to the family of marks formed from the weakly distinctive term ‘hyal’. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of the action, the applicant relies, in essence, on two pleas in law. The first alleges infringement of the principles of equal treatment and of sound administration in that the Board of Appeal examined, for the first time, its claim based on the existence of a family of marks, thus depriving it of the right to have the opposition examined by two adjudicating bodies of EUIPO. The second alleges infringement of Article 8(1)(b) of Regulation 2017/1001 in that the Board of Appeal erred in ruling out the existence of a likelihood of confusion in the present case. In that regard, the applicant submits, first, that the Board of Appeal did not correctly assess the distinctive character of the earlier mark or that of the element ‘hyal’, which is common to the signs at issue, and, secondly, that it incorrectly assessed the impact of the family of marks formed from the element in common ‘hyal’, of which it is the proprietor. EUIPO and the intervener dispute the applicant’s arguments. The Court considers it appropriate to examine the second plea first. 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. 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 territory and the relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In paragraphs 33 and 34 of the contested decision, the Board of Appeal found that, in the light of the goods at issue, the relevant public consisted both of professionals and of the general public. The Board of Appeal found that the public consisting of professionals had a high level of attention and that, in the light of the medical purpose of the goods at issue and of their impact on health and the human body, the general public also displayed a higher-than-average level of attention. Furthermore, it is apparent from paragraphs 35 to 37 of the contested decision that, since the opposition was examined on the basis of the earlier Italian word mark HYAL, the relevant territory for the purposes of examining the likelihood of confusion was Italy. There is no need to call into question those assessments, which are not, moreover, disputed by the applicant. The comparison of the goods at issue According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219 , paragraph 37 and the case-law cited). In paragraph 41 of the contested decision, the Board of Appeal concluded that the goods at issue were in part identical and in part similar. There is no need to call into question those assessments, which are not, moreover, disputed by the applicant. The comparison of th e signs 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). In the present case, it is necessary to compare, on the one hand, the earlier word mark HYAL and, on the other hand, the word mark applied for HYALERA. The distinctive elements of the mark applied for For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) , T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited). Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark (see judgment of 3 September 2010, 61 A NOSSA ALEGRIA , T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited). In the present case, the Board of Appeal found that the majority of the relevant public perceived the term ‘hyal’ as a reference to hyaluronic acid, with the result that the mark applied for would be broken down into two word elements, namely ‘hyal’ and ‘era’. According to the Board of Appeal, the term ‘hyal’, which is present in each of the signs at issue, was immediately understood by the relevant public as referring to hyaluronic acid, which could be the substance in, the ingredient in, or the intended use of the goods in question in Class 5. It found that, consequently, the majority, or a significant part, of the general public and professional public in Italy, which had a high level of attention, would perceive the term ‘hyal’ as weakly distinctive, or even as descriptive, in relation to the goods at issue. Furthermore, the Board of Appeal took the view that it was unlikely that the relevant public would associate the term ‘era’, in the sense of age, epoch, period of history or long period of time, with the goods at issue. Consequently, for the Board of Appeal, the term ‘era’ was more distinctive than the term ‘hyal’. In conclusion, the Board of Appeal found that the presence of the term ‘era’ in the final part of the mark applied for did not preclude a large part of the relevant public from being capable of making a connection between the signs at issue and hyaluronic acid (see paragraphs 54, 55, 57, 58, 60, 61 and 64 of the contested decision). The applicant claims that the Board of Appeal did not correctly assess the distinctive character of the element ‘hyal’ and complains, in that regard, that it relied on irrelevant, and therefore inappropriate, facts, evidence, judgments of the General Court and earlier decisions of the Boards of Appeal. EUIPO and the intervener dispute the applicant’s arguments. EUIPO claims that the Board of Appeal’s conclusion is based on a comprehensive overall assessment of the evidence provided in the present proceedings and on well-known facts and findings already made in previous decisions of the Boards of Appeal and in judgments of the General Court. It contends that, in particular, the evidence provided in the present case shows the existence of a wide range of goods containing hyaluronic acid on the Italian market, especially cosmetics, on which the term ‘hyal’ usually appears on the packaging, which shows that the Italian general public has been exposed to that term. The intervener adds that, under EU law, cosmetic products may be placed on the market only where their container and packaging include a list of ingredients drawn up by using the common ingredient name which is set out in the glossary of common ingredient names for use in the labelling of cosmetic products established by EU law, which includes hyaluronic acid and hyaluronidase. It submits that that confirms, in essence, that the Italian public is familiar with the use of the term ‘hyal’ with regard to cosmetics. According to the intervener, it is common knowledge that the cosmetics and pharmaceuticals industries are related. It argues that, consequently, consumers who know the term ‘hyal’ on account of the use made of it on the pharmaceuticals market will also know it in relation to cosmetics, and vice versa. – Preliminary remarks In the present case, the relevant public comprises the general public and the professional public in Italy. The applicant disputes the Board of Appeal’s assessment that the term ‘hyal’ will be considered to be weakly distinctive, or even descriptive, with regard to the goods at issue, since it will be recognised by the relevant public as a reference to hyaluronic acid, that is to say, an ingredient of those goods. It is apparent from the application that the applicant disputes the abovementioned assessment in particular in so far as it concerns the Italian general public. In that regard, it is apparent from settled case-law that, in order to conclude that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is not necessary to find that that likelihood of confusion exists for the whole of the relevant public (judgments of 19 December 2019, Japan Tobacco v EUIPO – I. J. Tobacco Industry (I. J. TOBACCO INDUSTRY) , T‑743/18, not published, EU:T:2019:872 , paragraph 35, and of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI) , T‑286/20, not published, EU:T:2021:239 , paragraph 38). A finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad) , T‑403/16, not published, EU:T:2017:824 , paragraph 50 and the case-law cited; judgment of 5 May 2021, GOBI , T‑286/20, not published, EU:T:2021:239 , paragraph 38). Consequently, in the present case, it is first of all necessary to examine whether the Board of Appeal’s assessment regarding the understanding of the term ‘hyal’ as a reference to hyaluronic acid is vitiated by an error of assessment, at the very least as regards a non-negligible part of the Italian general public. – The Italian general public’s understanding of the term ‘hyal’ According to the case-law, an understanding of a word element of a sign may be assumed to exist if the language of the sign is the native language of the relevant public. However, that understanding has to be proved in territories in which the relevant language is not the native language of that public, unless a sufficient knowledge of the language of the sign on the part of the relevant public in those territories is a well-known fact (judgment of 26 November 2008, New Look v OHIM (NEW LOOK) , T‑435/07, not published, EU:T:2008:534, paragraph 22). It is apparent in particular from the case-law that, with the exception of certain terms forming part of basic English vocabulary, it cannot be assumed that English terms are widely known to the non-English-speaking public in the European Union (judgment of 29 April 2020, Kerry Luxembourg v EUIPO – Döhler (TasteSense) , T‑109/19, not published, EU:T:2020:162, paragraph 65). However, if English terms have an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public is held to understand their meaning (judgment of 29 April 2020, TasteSense , T‑109/19, not published, EU:T:2020:162, paragraph 68). It must be pointed out at the outset, as the applicant submits, that the letter ‘y’ is not part of the Italian alphabet and that the letter ‘h’ is not much used in Italian. The term ‘hyal’ will therefore be perceived by the Italian general public as forming a word of foreign origin. Furthermore, since it is not claimed that the term ‘hyal’ is part of basic English vocabulary or of the basic vocabulary of any other language of the European Union, it could not be assumed that the Italian general public would understand it (see paragraph 40 above). Consequently, it is necessary to ascertain whether the Board of Appeal’s assessment regarding the Italian general public’s understanding of the term ‘hyal’ as a reference to hyaluronic acid (see paragraph 30 above) is correctly founded in the light, in particular, of the case-law of the General Court, the decisions of the Boards of Appeal, the evidence placed on the administrative file and the well-known facts referred to in the contested decision. In the first place, in paragraph 55 of the contested decision, the Board of Appeal relied on the judgments of 16 June 2021, Fidia farmaceutici v EUIPO – Ioulia and Irene Tseti Pharmaceutical Laboratories (HYAL) (T‑215/20, not published, EU:T:2021:371 ), and of 2 March 2022, Fidia farmaceutici v EUIPO – Giuliani (IALO TSP) (T‑333/20, not published, EU:T:2022:113 ), in which, according to the Board of Appeal, the Court confirmed the understanding of the term ‘hyal’ as an abbreviation of the term hyaluronidase or as a reference to hyaluronic acid. First, it must be pointed out that, in the case that gave rise to the judgment of 16 June 2021, HYAL (T‑215/20, not published, EU:T:2021:371 ), which concerned invalidity proceedings based on the absolute ground for refusal set out in Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal, and then the Court, focused in their examination on the understanding of the term ‘hyal’ by the English-speaking professional public at which the goods in Class 5 were aimed, which public had an above-average level of attention. Consequently, the judgment of 16 June 2021, HYAL (T‑215/20, not published, EU:T:2021:371 ), cannot usefully be relied on for the purposes of establishing the Italian general public’s understanding of that term. Secondly, in the judgment of 2 March 2022, IALO TSP (T‑333/20, not published, EU:T:2022:113 , paragraph 62), the Board of Appeal had based its assessment solely on the part of the general public in the European Union which had been exposed to intensive and widespread use of the term ‘hyal’ and which therefore understood that term. Consequently, although it can be deduced from the judgment of 2 March 2022, IALO TSP (T‑333/20, not published, EU:T:2022:113 ), that an understanding of the term ‘hyal’ by part of the general public in the European Union follows from its exposure to intensive use of that term, it does not follow from that judgment that that would be the case as regards the Italian general public. In the second place, in paragraph 56 of the contested decision, the Board of Appeal found that the understanding of the term ‘hyal’ as a reference to hyaluronic acid was also confirmed by three previous decisions of the Boards of Appeal, namely the decision of 5 May 2014, HYALU-STEM/HYAL (Case R 1316/2013-5), the decision of 11 July 2014, HYALU. SPOT/HYALU-VITAL (Case R 1289/2013-4), and the decision of 18 October 2021, HYALURON REPAIR (Case R 384/2021-5). First of all, in the decision of 5 May 2014, HYALU-STEM/HYAL, what was at issue was the perception of the professional public in the chemical industry, at which the goods in Class 1 were aimed, and that of the general public, at which the goods in Class 3 were aimed. It must be stated that, in paragraph 36 of that decision, the Board of Appeal found that the average consumer of the goods in Class 3 perceived the term ‘hyal’ as fanciful and not as a reference to hyaluronic acid. Next, in the decision of 11 July 2014, HYALU. SPOT/HYALU-VITAL, what was at issue was the perception of the German-speaking general public with regard to goods in Class 3. Lastly, in the decision of 18 October 2021, HYALURON REPAIR, which confirmed the refusal of registration of the sign HYALURON REPAIR on the basis of Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal examined that absolute ground for refusal with regard to the English-speaking and German-speaking general public and professional public at which the goods in Class 3 were aimed and found that the term ‘hyaluron’ was understood by a sufficiently large proportion of that public as a synonym for, or a reference to, hyaluronic acid. It is apparent from the findings made in paragraphs 50 to 52 above that the abovementioned decisions do not concern either the goods at issue in Class 5 or the Italian general public’s perception of the term ‘hyal’. Consequently, those decisions are not, in so far as the Italian general public is concerned, capable of forming a basis for the Board of Appeal’s assessment that the relevant public would understand the term ‘hyal’, in connection with the goods in Class 5, as a reference to hyaluronic acid. That said, it must be deduced from those decisions, and from the judgment of 2 March 2022, IALO TSP (T‑333/20, not published, EU:T:2022:113 ), that the general public, including the Italian general public, is in a position to understand the term ‘hyal’ as a reference to hyaluronic acid if it has been exposed to intensive use of that term. In the third place, in paragraph 57 of the contested decision, the Board of Appeal referred to the ‘evidence on file’, namely screenshots of goods bearing the term ‘hyal’ or the term ‘hyaluronic’ sold on Polish and Italian websites, scientific articles regarding the use of hyaluronic acid in medicine and information regarding the Italian pharmaceuticals and cosmetics markets and regarding the Italian public’s command of English. First, it must be pointed out, as observed by the applicant, that the evidence which the intervener submitted before the Opposition Division which concerns the use of the term ‘hyal’ in connection with goods sold on Polish websites is not relevant for the purposes of assessing the extent of the Italian general public’s exposure to the term ‘hyal’. Secondly, the intervener submitted screenshots of Italian websites offering for sale cosmetics in Class 3 containing hyaluronic acid on which the term ‘hyal’ appears (approximately 70 different products on which the terms ‘hyal’ or ‘hyaluronic’ appear) and also some pharmaceutical products, such as a box of food supplements, a box of eye drops and a sterile solution for inhalation and nasal administration on which the term ‘hyal’ appears. It must be stated, as observed by the applicant, that the screenshots submitted by the intervener do not provide any indication as regards the extent of the Italian general public’s exposure to goods bearing the term ‘hyal’ and therefore as regards the knowledge of that term which may be deduced from those examples. In particular, since there are no figures regarding the number of visitors to those websites or the volumes of sales in Italy of cosmetics or pharmaceutical products containing hyaluronic acid, those screenshots do not make it possible to rule out the possibility that a non-negligible part of the Italian general public will not have been exposed to the term ‘hyal’ as a reference to hyaluronic acid and, consequently, that it will perceive the term ‘hyal’ as distinctive with regard to the goods at issue. For that reason, it is also necessary to reject EUIPO’s contention that the term ‘hyal’ appears on the packaging of the goods, which does not provide any indication as regards the intensity of the Italian general public’s exposure to that term. Thirdly, the intervener submitted scientific articles, written in English, relating to the use of hyaluronic acid in medicine, which must be regarded as being aimed at a professional public and at the part of the Italian general public which has a good knowledge of English and an interest in the use of hyaluronic acid in medicine. However, the Court has already held that it is well known that some Italian consumers do not have a thorough knowledge of English and that that proportion of consumers is not negligible (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp) , T‑135/14, EU:T:2016:69 , paragraph 114 (not published)). Furthermore, the evidence placed on the administrative file does not prove that the part of the Italian general public which is not interested in the use of hyaluronic acid in medicine is negligible. Consequently, the scientific articles which the intervener submitted before the Board of Appeal do not confirm that the Italian general public has been widely exposed to the term ‘hyal’. Fourthly, the intervener submitted information on the characteristics of the Italian pharmaceuticals and cosmetics markets, statistics regarding those markets and information on the Italian general public’s command of English. It must be stated that the abovementioned evidence deals with the Italian pharmaceuticals and cosmetics markets in general and does not contain any indication as to the share which hyaluronic acid-based products represent in those markets. Moreover, it has already been stated that the proportion of Italian consumers who do not have a thorough knowledge of English is not negligible (see paragraph 61 above). It follows that the evidence referred to in paragraph 64 above cannot confirm that the Italian general public has been widely exposed to the term ‘hyal’. In the fourth place, in paragraph 62 of the contested decision, the Board of Appeal found that the territory of the European Union formed a single market in which goods and services circulate freely, with the result that consumers were confronted on a daily basis with trade marks and descriptive terms in foreign languages, with which they gradually became familiar, and that, consequently, it was inconceivable that an Italian consumer would purchase a product containing hyaluronic acid without understanding the meaning of the term ‘hyal’. In that regard, it is sufficient to state that, although the fact that European consumers are generally exposed to trade marks consisting of English terms, in some cases descriptive terms, with which they become familiar may be regarded as well known, that general consideration is not sufficient to show that that is the case in Italy with regard to the term ‘hyal’. In the fifth place, in paragraph 63 of the contested decision, the Board of Appeal found that the names of the substances hyaluronidase and hyalosidase were registered as international nonproprietary names and deduced from that, in essence, that all the targeted professional circles as well as ‘general consumers with some relevant knowledge’ would immediately perceive the well-known term ‘hyal’ as an indication of the active ingredients hyaluronidase and hyalosidase. In that regard, it is sufficient to state that the registration of the substances hyaluronidase and hyalosidase as international nonproprietary names is, at the very most, capable of confirming that the term ‘hyal’ is understood as a reference to hyaluronic acid by the part of the relevant public which consists of Italian professionals. That is not therefore capable of proving that the term ‘hyal’ is weakly distinctive for the Italian general public. Moreover, the Board of Appeal’s finding that the term ‘hyal’ is well known, which is based on the judgment of 16 June 2021, HYAL (T‑215/20, not published, EU:T:2021:371 , paragraph 55), to which a reference is made in paragraph 63 of the contested decision, must be rejected for the reasons set out in paragraphs 45 and 46 above. In the light of all the foregoing, it must be held that the Board of Appeal’s assessment that the relevant public had been widely exposed to the term ‘hyal’ has no factual basis as regards the Italian general public and that the Board of Appeal made an error of assessment in finding that there had been widespread use of the term ‘hyal’ in Italy with regard to, inter alia, pharmaceutical and medical products and that that term was immediately understood by the relevant public - including therefore by the Italian general public - as designating hyaluronic acid and, consequently, as a substance in, or ingredient of, all the goods at issue. That finding is not invalidated by the intervener’s argument that there are common EU rules governing the placing of pharmaceutical and cosmetic products on the market, such as Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products (OJ 2009 L 342, p. 59), Article 19(1)(g) of which provides that it is possible to place cosmetic products on the market only where the packaging of those products and, as the case may be, their container bear in indelible, easily legible and visible lettering, inter alia, a list of ingredients, which is drawn up using the common ingredient name that is referred to in the glossary compiled by the European Commission which is the subject of the annex to Commission Implementing Decision (EU) 2022/677 of 31 March 2022 laying down rules for the application of Regulation No 1223/2009 (OJ 2022 L 127, p. 1), which glossary refers to hyaluronic acid. As there is no information in the case file regarding the volumes of cosmetic products containing hyaluronic acid sold in Italy, the existence of common rules regarding the labelling of those products does not make it possible to establish the alleged wide exposure of the Italian general public to the term ‘hyal’. It follows from all the foregoing that the Board of Appeal’s finding that the majority of the relevant public understands the term ‘hyal’ as a reference to hyaluronic acid is vitiated by an error of assessment, since that term has no meaning for a non-negligible part of the Italian general public. – The Italian general public’s understanding of the term ‘era’ The Board of Appeal also found that the term ‘era’, which means ‘age’, ‘epoch’ or ‘period of history or long period of time’ in Italian, was more distinctive than the term ‘hyal’ in relation to the goods at issue (see paragraphs 60 and 61 of the contested decision). There is no reason to call into question the meaning of the term ‘era’ relied on by the Board of Appeal or its assessment that that term is, in essence, distinctive in relation to the goods at issue, findings which are not disputed by the applicant. However, the term ‘era’ must be recognised as having the same degree of distinctiveness as the term ‘hyal’, at the very least in so far as a non-negligible part of the Italian general public is concerned. In the light of all of the foregoing considerations, it must be held that the Board of Appeal’s assessments regarding the distinctive elements of the mark applied for are vitiated by an error of assessment as regards a non-negligible part of the Italian general public, in respect of which it has not been established that it has been exposed to intensive use of the term ‘hyal’. Consequently, for that part of the relevant public, even if it were to break down the mark applied for into two elements, ‘hyal’ and ‘era’, those elements will have no meaning with regard to the goods at issue in Class 5 and will therefore have a normal degree of distinctiveness. The visual, phonetic and conceptual comparison of the signs In paragraphs 67 to 70 of the contested decision, the Board of Appeal found that the signs at issue were, at best, visually, phonetically and conceptually similar to a low degree, since they had only the descriptive word element ‘hyal’ in common and differed in the presence, in the mark applied for, of the distinctive term ‘era’. Thus, from a visual standpoint, the Board of Appeal found that the signs at issue coincided in the weakly distinctive and non-dominant element ‘hyal’, which constituted the initial part of the mark applied for and the only word element of the earlier mark, and differed in the presence of the distinctive element ‘era’ at the end of the mark applied for. From a phonetic standpoint, the Board of Appeal found that, on account of the weak distinctive character of the term ‘hyal’, the relevant public paid more attention to the endings of the signs at issue and, therefore, that the element ‘era’ in the mark applied for created a significant difference in the pronunciation of those signs. Lastly, from a conceptual standpoint, the Board of Appeal found that, notwithstanding that the signs at issue had in common the element ‘hyal’, which referred to hyaluronic acid and which, on account of its weak distinctive character, played a limited role in and had less impact on the assessment of the likelihood of confusion, those signs differed in the presence of the distinctive element ‘era’. The applicant does not put forward any arguments seeking specifically to call into question the degree of visual, phonetic and conceptual similarity of the signs at issue which was found to exist by the Board of Appeal, and confines itself to disputing the weakly distinctive, or even descriptive, character of the term ‘hyal’, which is common to those signs. However, it is apparent from the case-law that where it is called upon to assess the legality of a decision of a Board of Appeal of EUIPO, the General Court cannot be bound by an incorrect assessment of the facts by that Board of Appeal, since that assessment is part of the findings the legality of which is being disputed before the General Court (judgment of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraph 48). In the present case, first, since the applicant has claimed that the contested decision should be annulled and has based its second plea on an infringement of Article 8(1)(b) of Regulation 2017/1001, the assessment of the similarity between the signs at issue is part of the findings of the Board of Appeal the legality of which is being disputed before the Court. Secondly, it must be stated that the Board of Appeal’s assessment regarding the low degree of visual, phonetic and conceptual similarity is based exclusively on the limited impact of the term ‘hyal’ in the context of the comparison of the signs, in the light of its weakly distinctive character with regard to the goods at issue (see paragraph 78 above), an assessment which EUIPO does not, moreover, dispute. It must be borne in mind that the weakly distinctive elements of a trade mark generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness (see, to that effect, judgment of 12 June 2019, Hansson , C‑705/17, EU:C:2019:481 , paragraph 53 and the case-law cited). It must therefore be held that the error of assessment which the Board of Appeal made as regards the Italian general public’s understanding of the term ‘hyal’ necessarily had an impact on the degree of visual, phonetic and conceptual similarity between the signs at issue which was found to exist in the contested decision. Consequently, it cannot be ruled out that, if the Board of Appeal had found that the term ‘hyal’ had an average degree of distinctiveness, that term would have had greater weight in the comparison of the signs, at the very least equal weight to that of the term ‘era’, and that it would therefore have concluded that there was a higher degree of similarity between the signs. The distinctive character of the earlier mark It is apparent from recital 11 of Regulation 2017/1001 that the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 20). Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR) , T‑112/03, EU:T:2005:102, paragraph 61). In paragraph 78 of the contested decision, the Board of Appeal found that, for the majority of the relevant public, the earlier mark was distinctive to a low degree. The applicant complains that the Board of Appeal found that the earlier mark was descriptive, non-distinctive and incapable of giving rise to a finding of a likelihood of confusion. In essence, the applicant submits that the Board of Appeal denied, in the contested decision, the very validity of the earlier mark and did not, contrary to the requirements of the case-law, recognise that it had a certain degree of distinctiveness. The applicant claims that the alleged error of having deprived the earlier mark of its validity constitutes, in itself, an infringement of Article 8(1)(b) of Regulation 2017/1001 and of the principle of coexistence between national trade marks and EU trade marks. EUIPO and the intervener dispute the applicant’s arguments. EUIPO contends, inter alia, that, after analysing the term ‘hyal’, the Board of Appeal assessed its distinctiveness, first as an element of the mark applied for and then in the context of the examination of the degree of distinctive character of the earlier mark, which is in accordance with the case-law. Furthermore, it argues that, to the extent that the applicant’s arguments can be understood as suggesting that respect for the validity of the earlier mark would necessarily have led to the existence of a likelihood of confusion, those arguments must be rejected in accordance with the Court’s case-law. The intervener submits that the Board of Appeal clearly took the view that the earlier mark had a low degree of inherent distinctiveness, and not that it was devoid of distinctive character. Furthermore, according to the intervener, it was for the applicant to prove that the Board of Appeal’s assessment regarding the descriptiveness of the term ‘hyal’ was incorrect, which it did not, however, do. Lastly, the intervener claims that, since the evidence gathered establishes that the term ‘hyal’ has no distinctive character, the earlier mark cannot have a high, or even average, degree of distinctiveness. It must be pointed out, as observed by EUIPO, that, in the contested decision, the Board of Appeal, first, examined the distinctive character of the element ‘hyal’, which is common to the signs at issue, for the purposes of comparing those signs and, secondly, assessed the inherent distinctiveness of the earlier mark. In that context, it concluded, in paragraphs 75 to 78 of the contested decision, that the earlier mark was distinctive to a low degree for the majority of the relevant public (consisting of professionals and the general public with a high level of attention with regard to the goods in Class 5), which perceived it as a reference to hyaluronic acid. It follows that, contrary to what the applicant claims, the Board of Appeal did not deny that the earlier mark had any distinctive character and did not therefore infringe the principle of coexistence between national trade marks and EU trade marks. Furthermore, as regards the inherent distinctiveness of the earlier mark, it must be borne in mind that, in the context of opposition proceedings based on Article 8(1) of Regulation 2017/1001, its assessment constitutes a matter of law which is necessary to ensure the correct application of that regulation, with the result that the adjudicating bodies of EUIPO are required to examine that matter, if necessary of their own motion. As that assessment does not presuppose any matter of fact which it is for the parties to establish and does not require the parties to provide facts, evidence or arguments seeking to establish that distinctiveness, EUIPO alone is in a position to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (see, to that effect, judgment of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 43). In the present case, it must be held that, by disputing the low degree of distinctiveness which was found to exist by the Board of Appeal, the applicant, which did not rely on the enhanced distinctiveness through use of the earlier mark, submits, in essence, that it has an average degree of distinctiveness. The applicant cannot therefore be required to adduce specific evidence, but rather to demonstrate that the evidence submitted by the intervener does not sufficiently justify the Board of Appeal’s finding that the earlier mark has a low degree of distinctiveness, at the very least with regard to the Italian general public. It follows that the intervener errs in claiming that it was for the applicant to prove that the degree of inherent distinctiveness of the earlier mark was other than low. In any event, it must be pointed out that the finding that the earlier mark has a low degree of inherent distinctiveness follows from the Board of Appeal’s finding that the term ‘hyal’ has a low degree of distinctiveness in relation to the goods at issue (see paragraphs 75 and 76 of the contested decision). Since it has been held that that finding is incorrect in so far as concerns the Italian general public or, at the very least, a non-negligible part of that public, it must also be held, with regard to that public, that the finding that the earlier mark has a low degree of distinctiveness, which is based on the same considerations and evidence, is incorrect. In the light of all the foregoing, the Board of Appeal’s assessment that the earlier mark has a low degree of distinctiveness is vitiated by an error of assessment, at the very least with regard to a non-negligible part of the Italian general public. The likelihood of confusion According to settled case-law, 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 17 April 2008, Ferrero Deutschland v OHIM , C‑108/07 P, not published, EU:C:2008:234, paragraph 45). Furthermore, the more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 20). In paragraphs 88 to 102 of the contested decision, the Board of Appeal set out the factors which, in its view, made it possible to conclude, in the context of a global assessment, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. First, the Board of Appeal stated that the goods at issue were in part identical and in part similar and that they were aimed both at professionals and at the general public with a high level of attention (see paragraph 95 of the contested decision). Secondly, it stated that the weak distinctive character of the term ‘hyal’, the high level of attention of the relevant public in relation to the goods at issue and the differences as regards the endings of the signs at issue played a significant differentiating role between those signs. In particular, the Board of Appeal found that the differences resulting from the presence, in the mark applied for, of the term ‘era’ were not negligible and offset the similarities resulting solely from the presence of the term ‘hyal’ in the two signs at issue (see paragraphs 96 and 97 of the contested decision). Thirdly, the Board of Appeal concluded that, in the light of the at-most-low degree of visual, phonetic and conceptual similarity, the low degree of distinctiveness of the earlier mark, the greatly differing overall impression and the high level of attention of the relevant public, any likelihood of confusion could be excluded, even with regard to identical goods (see paragraph 98 of the contested decision). Lastly, the Board of Appeal refused to recognise that there was a likelihood of confusion with respect to the family of marks based on the element in common ‘hyal’, since that element had a weak distinctive character (see paragraph 100 of the contested decision). The applicant disputes, in essence, the Board of Appeal’s finding that there is no likelihood of confusion in the present case, since that finding is based, first, on the erroneous findings regarding the lack of distinctive character of the earlier mark and of the term ‘hyal’, which is common to the signs at issue, and, secondly, on an incomplete examination of the existence of a family of marks based on the element in common ‘hyal’ of which it is the proprietor and on the Board of Appeal’s refusal to draw the necessary inferences, in the present case, with regard to the existence of such a family of marks. EUIPO and the intervener dispute the applicant’s arguments. EUIPO contends, first, that the Board of Appeal relied on the assumption that the applicant had established the existence of a family of marks based on the element in common ‘hyal’, that is to say, an assumption favourable to the applicant, and found that it was unlikely that the relevant public would think that the mark applied for belonged to that family on the ground that that element in common was weakly distinctive and widely used on the market in a descriptive manner. Secondly, it submits that the applicant has not provided any convincing argument or evidence showing that, notwithstanding the widespread use of the term ‘hyal’, the relevant public might indeed associate the mark applied for with the family of marks claimed. The intervener submits that the applicant has not established the existence of a family of marks based on the element in common ‘hyal’. Moreover, it argues that such a family, based on the descriptive term in common ‘hyal’, cannot serve as a basis for an opposition to the registration of other signs containing the same term. In the first place, as regards the likelihood of confusion, it is apparent from paragraphs 44 to 71 above that the Board of Appeal made an error of assessment in finding that the Italian general public understood the term ‘hyal’ as a reference to hyaluronic acid and that that term was therefore weakly distinctive with regard to the goods at issue. As stated in paragraphs 82 to 85, 98 and 99 above, that error necessarily had an impact on the assessment of the similarity of the signs at issue and on the assessment of the distinctive character of the earlier mark, which are, consequently, also vitiated by an error of assessment. Since the similarity of the signs and the degree of distinctiveness of the earlier mark have an impact on the global assessment of the likelihood of confusion (see paragraphs 101 and 102 above), it must be held that those errors necessarily vitiated the Board of Appeal’s reasoning relating to the assessment of the likelihood of confusion, in so far as, in particular in paragraphs 95, 97 and 98 of the contested decision, it relied on the low degree of visual, phonetic and conceptual similarity and on the low degree of distinctiveness of the earlier mark in order to find that any likelihood of confusion was excluded, even taking into account the high level of attention of the relevant public. In the second place, as regards the applicant’s complaint based on the alleged family of marks formed from the element ‘hyal’, it must be stated, as observed by EUIPO, that the Board of Appeal relied on the assumption that such a family existed and did not therefore examine whether the conditions for its existence were actually satisfied in the present case. That said, the Board of Appeal found that any likelihood of association between the mark applied for and the family of marks claimed by the applicant was excluded in the light of the weak distinctive character of the element in common ‘hyal’. As is apparent from paragraphs 41 to 74 above, the Board of Appeal made an error of assessment in finding that, with regard to the Italian general public, the term ‘hyal’ was weakly distinctive in relation to the goods at issue in Class 5. Since the weak distinctive character of that element is the only reason why the Board of Appeal rejected the applicant’s claim relating to the existence of a family of marks based on the element in common ‘hyal’ (see paragraph 100 of the contested decision), the error referred to in paragraph 113 above necessarily vitiated the Board of Appeal’s assessment that there was no likelihood of association between the mark applied for and that family of marks. In the light of all the foregoing, the second plea must be upheld and the contested decision must therefore be annulled, without there being any need to examine the first plea. Costs Under 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 EUIPO and the intervener have been unsuccessful, they must be ordered to bear their own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2023 (Case R 230/2023-5); 2. Orders EUIPO and Vorwarts Pharma sp. z o.o. to pay the costs. Marcoulli Schwarcz Norkus Delivered in open court in Luxembourg on 18 September 2024. V. Di Bucci 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 . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII