Market Watch v EUIPO - Glaxo Group (MITOCHRON) (Judgment) [2016] EUECJ T-312/15 (13 May 2016)

Judgment Background to the dispute On 4 September 2012, the applicant, Market Watch Franchise & Consulting, Inc., 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). Registration as a mark was sought for the word sign MITOCHRON. The goods and services in respect of which registration was sought fall within Classes 3, 5 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 3: ‘Bleaching preparations and other substances for laundry use, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices’; – Class 5: ‘Pharmaceutical and veterinary preparations, sanitary preparations, dietetic preparations for medical use, preparations of trace elements for human and animal use, food supplements for medical use, mineral food supplements, vitamin preparations’; – Class 35: ‘Advertising’. The EU trade mark application was published in Community Trade Marks Bulletin No 7/2013 of 10 January 2013. On 8 April 2013, the intervener, Glaxo Group Ltd, 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 in Class 5 referred to in paragraph 3 above. The opposition was based on the United Kingdom word mark MIVACRON, covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations and substances; all included in Class 5’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. On 17 December 2013, the Opposition Division upheld the opposition and rejected the application for registration in respect of all the goods in Class 5, taking the view that there was a likelihood of confusion between the marks at issue. On 13 February 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. By decision of 20 March 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it considered that, first, the relevant public consisted of professionals in the pharmaceutical and medical sectors and general end consumers in the United Kingdom, all with a high level of attention (paragraphs 20 to 23 of the contested decision), second, the goods covered by the signs at issue were partly identical and partly similar (paragraph 24 of the contested decision), third, the signs at issue were visually and phonetically similar (paragraphs 25 and 26 of the contested decision), fourth, the earlier sign had no meaning, whereas only a part of the relevant public accorded a particular meaning to the sign applied for (paragraphs 27 to 30 of the contested decision), and, fifth and, thus, on the whole, in view of the identity and similarity of the goods, as well as the visual and phonetic similarity between the signs at issue, there was a likelihood of confusion on the part of the relevant public, even if the level of attention of that public was higher than normal (paragraph 32 of the contested decision). Forms of order sought The applicant claims that the Court should: – annul the contested decision and reject the opposition; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs it incurred. The intervener contends that the Court should: – dismiss the action; – order the applicant to bear its own costs and those of the intervener. Law In support of its action, the applicant relies, essentially, on a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and argues that the Board of Appeal was wrong to find a likelihood of confusion between the marks at issue. EUIPO and the intervener dispute the applicant’s arguments and argue that the Board of Appeal was right to conclude that there was a likelihood of confusion between the marks at issue. Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 207/2009, earlier trade marks means trade marks registered in a Member State with a date of application for registration earlier than the date of application for registration of the EU trade mark. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the 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 designated (see judgment of 9 July 2003 in 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 No 207/2009, 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). 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 products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In view of the goods at issue, the Court considers that the Board of Appeal was right to consider, for the reasons it set out in paragraphs 20 to 22 of the contested decision, that, in relation to the goods covered by the marks at issue in Class 5, the relevant public was composed of professionals in the pharmaceutical and medical sectors and general end consumers, all with a high level of attention. The goods covered by the marks at issue in Class 5 and, in particular, the ‘pharmaceutical preparations and substances; all included in Class 5’ share the core trait of being marketed on the recommendation of or through a health professional, prescribing doctor, pharmacist or veterinarian. In such circumstances, the relevant public is made up of both end consumers and professionals in the healthcare sectors concerned. Even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for consumers since they are likely to be brought into contact with those products, albeit during separate purchasing transactions taking place, for each of those individual products, at different times (see judgment of 11 June 2014 in Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX) , T‑281/13, not published, EU:T:2014:440, paragraph 31 and the case-law cited). In so far as the applicant puts forward certain additional arguments to show that the relevant public has a high level of attention, it suffices to state that, in doing so, it actually confirms the position of the Board of Appeal in that regard. As has been noted in paragraph 20 above, the Board of Appeal considered that the relevant public had a high level of attention. Given that the earlier mark is a trade mark registered in the United Kingdom, the Board of Appeal was right to find, in paragraph 23 of the contested decision, that it should be determined whether there is a likelihood of confusion between the marks at issue on the part of the relevant public in the United Kingdom. Comparison of the goods 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, inter alia, their nature, their intended purpose and 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 in 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 24 of the contested decision, the Board of Appeal endorsed the assessment of the Opposition Division according to which the goods covered by the signs at issue were partly identical and partly similar. Since that assessment is not disputed by the parties or flawed, it must be approved. Comparison of the signs The global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression created by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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 in OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). With regard to the visual comparison of the signs at issue, the Board of Appeal considered, in paragraph 25 of the contested decision, that the signs at issue shared their first letters, ‘m’ and ‘i’, as well as their last letters, ‘c’, ‘r’, ‘o’ and ‘n’. Those signs had almost the same length. They differed in their third and fourth letters, namely ‘v’ and ‘a’ in the earlier sign and ‘t’ and ‘o’ in the sign applied for. The earlier sign also contained an additional ‘h’. Those letters were placed in the middle of the signs and thus did not alter the impression of visual similarity between the marks at issue. Therefore, the signs at issue were visually similar. To the extent that the applicant argues that the signs at issue are similar only in so far as they appear as combinations of largely the same letters, although those letters are in a different order and differ in typeface, it must be found that, as the intervener noted, on the one hand, the letters ‘m’, ‘i’, ‘c’, ‘r’, ‘o’ and ‘n’ are in the same order in the signs at issue and, on the other, the marks at issue are word marks not claiming any special graphic feature or colour within the meaning of Rule 3(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). On the whole, in view, in particular, of the fact that the signs at issue share those six letters, at the beginning and at the end, and of their almost identical lengths, the Board of Appeal was justified in considering that the signs at issue were visually similar. With regard to the phonetic comparison of the signs at issue, the Board of Appeal considered, in paragraph 26 of the contested decision, that the signs at issue had three syllables and shared the first, ‘mi’, and the last, ‘cron’. The additional ‘h’ in the last syllable of the earlier sign was silent. The differences in the middle syllables, namely ‘va’ in the earlier sign and ‘to’ in the sign applied for, were insufficient to alter the impression of phonetic similarity between the signs at issue, which was due to the identity of the first and third syllables. In so far as the applicant argues that the signs at issue demonstrate clear phonetic differences that may be observed by anyone, it is sufficient to note that it fails to indicate what precisely those differences are and thus confines itself to unsupported claims. In any event, it is appropriate to hold that the Board of Appeal did not err in stating that, since the signs at issue shared the first (‘mi’) and last (‘cron’) syllables, the additional letter ‘h’ in the earlier sign being silent, the signs at issue were phonetically similar. With regard to the conceptual comparison of the signs, it is appropriate to note that, according to the case-law, conceptual differences between two signs may counteract the visual and phonetic similarities between them only if at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (see, to that effect, judgment of 12 January 2006 in Ruiz-Picasso and Others v OHIM , C‑361/04 P, EU:C:2006:25, paragraph 20). The Board of Appeal considered that the earlier sign and the sign applied for — if the latter were taken as a whole — had no meaning. Only part of the relevant public would know the meaning of the prefix ‘mito’ in the field of medicine, inter alia in relation to mitochondrial disorders, and of the word element ‘chron’ relating to time. It must be held that, even for that part of the public, the association of those two elements does not result in the attachment of a clear and specific meaning to the mark applied for. Accordingly, without a clear meaning of at least one of the signs, it is impossible to carry out a conceptual comparison of the signs at issue. Likelihood of confusion 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 in Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and 14 December 2006 in 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 paragraph 32 of the contested decision, the Board of Appeal considered that, in view of the fact that the goods covered by the signs at issue were partly identical and partly similar and having regard to the visual and phonetic similarity between the signs, on the whole, there was a likelihood of confusion on the part of the relevant public, even if that public was particularly attentive. First, to the extent that the applicant argues that, in the present case, the phonetic impression is more important than the visual impression, it is sufficient to recall that, contrary to what it claims, the signs at issue resemble each other not only visually, but also phonetically, with the result that that argument is ineffective. Second, in relation to the applicant’s argument that the consumer has only a limited and more or less vague memory of a trade mark and will not encounter the marks at issue next to one another, it must be held that that argument is inconsistent with its assertion that the relevant public has an increased level of attention overall, and that, if that were taken as true, it would actually be an argument supporting a likelihood of confusion. In the present case, it was found that the goods covered by the signs at issue were partly identical and partly similar and that the signs at issue were visually and phonetically similar. As the earlier sign lacks concrete meaning, the earlier mark has at least normal distinctiveness. In such circumstances, even if the relevant public demonstrates a high level of attention, the Board of Appeal was right to find that there was a likelihood of confusion between the marks at issue on the part of the relevant public in the United Kingdom. As the single plea relied on by the applicant is unfounded, the action must be dismissed in its entirety without it being necessary to examine the admissibility of the applicant’s first head of claim in so far as it seeks to have the opposition rejected by the Court. 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Fourth Chamber), hereby: 1. Dismisses the action; 2. Orders Market Watch Franchise & Consulting, Inc. to pay the costs. Prek Labucka Kreuschitz Delivered in open court in Luxembourg on 13 May 2016. [Signatures] * 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