Market Watch v OHMI - Ares Trading (Seroslim) (Intellectual property) [2010] EUECJ T-201/08 (28 September 2010)

Judgment Background to the dispute On 8 November 2004, the applicant, Market Watch Franchise & Consulting, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). The mark for which registration was sought is the word sign Seroslim. The goods in respect of which registration was sought are in 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 to the following descriptions for each of those classes: – 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 for medical purposes, dietetic substances adapted 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 application for a Community trade mark was published in Community Trade Marks Bulletin No 24/2005 of 13 June 2005. On 2 September 2005, the intervener, Ares Trading SA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for. The opposition was based on the earlier Community word mark SEROSTIM, registered on 6 March 2003, under No 2405694, for goods in Class 5 corresponding to the description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; excluding all kinds of dermatological pharmaceutical products’. The grounds relied on in support of the opposition included in particular the ground referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was based on all the goods covered by the earlier trade mark and was directed against all the goods for which registration had been sought. On 30 March 2007, the Opposition Division rejected the application for a Community trade mark so far as concerns all the goods falling within Class 5 and also for ‘soaps, hair lotions and dentifrices’ included in Class 3, on the ground that, given the similarity of the marks at issue, there was a likelihood of confusion with regard to the identical or similar goods under the mark applied for. On 22 May 2007, the applicant filed an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division. By decision of 6 March 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the ground that the conditions set out in Article 8(1)(b) of Regulation No 40/94 were fulfilled. Forms of order sought The applicant claims that the Court should: – declare the action to be admissible; – annul the contested decision and dismiss the intervener’s application for a ‘declaration of invalidity’ of the mark applied for; – order OHIM to pay the costs. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends, in essence, that the Court should: – declare the applicant’s second head of claim inadmissible in that it seeks the dismissal of the intervener’s application for a ‘declaration of invalidity’ of the mark applied for; – dismiss the action as unfounded as to the remainder and find that there is a likelihood of confusion between the signs at issue in so far as all the goods in Class 5 and ‘soaps, hair lotions and dentifrices’ in Class 3 are concerned, given the high degree of similarity between the signs at issue and the identity and/or similarity of the respective goods; – order the applicant to pay the costs of the proceedings before the Opposition Division, the proceedings before the Board of Appeal and the present proceedings. Law In support of its action, the applicant advances a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94. Arguments of the parties The applicant emphasises that the level of attention that the relevant public displays is high as regards goods and services connected to human health. It is ‘a fact well known to consumers’ that the slightest differences between such goods and services as regards their trade names, which are based on chemical nomenclature, may be decisive. Consumers’ attention is further increased by the fact that confusion will produce ‘particularly disagreeable consequences’, which is enough to make them pay special attention. With regard to the comparison of the signs, the applicant states that the Board of Appeal limited itself to the opinion that the ‘obvious similarities’ between the marks at issue were sufficient to justify the assumption that a likelihood of confusion existed. Phonetically, although the marks at issue differ only by one consonant, this consonant is of vital importance to their pronunciation. For that reason alone, a likelihood of confusion is non-existent. Due to that difference of pronunciation, the visual similarity noted by the Board of Appeal fades into the background entirely. On a conceptual level, the relevant public will associate the element ‘sero’ of the marks at issue with blood serum without paying any special attention to it. The difference of meaning between the elements ‘slim’ and ‘stim’ will therefore become much more important. For a large part of the relevant public, the element ‘slim’ conjures up the English verb ‘to slim’, known in all the Member States, and the element ‘stim’ can only be associated with the Latin word ‘stimulare’. Unless they regard the trade marks as ‘fanciful marks’, consumers will therefore expect a product that serves to regulate body weight and a product stimulating activity, that is to say two products which, from the point of view of their use, are not similar enough to create a likelihood of confusion. OHIM and the intervener dispute those arguments, referring essentially to the content of the contested decision. Findings of the Court Under Article 8(1)(b) of Regulation No 40/94, 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. According to settled case-law, there is a likelihood of confusion if the public might think that the goods or services at issue come from the same undertaking or, as the case may be, economically linked undertakings (Case T-164/03 Ampafrance v OHIM – Johnson & Johnson ( monBeBé ) [2005] ECR II-1401, paragraph 46). The existence of a likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and goods or services at issue, taking into account all factors relevant to the circumstances of the case (Case C-39/97 Canon [1998] ECR I-5507 , paragraph 17; order in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraph 28; and Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 25 and 26). That global assessment implies some interdependence between the factors taken into account, in particular 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 ( Canon , paragraph 17). It is in the light of those considerations that it must be examined whether the Board of Appeal correctly decided that there was a likelihood of confusion between the earlier mark and the mark applied for. 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 (Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449 , paragraph 42 and the case-law cited). In the present case, the Board of Appeal took the view that the relevant public consists of the average consumer in the European Union. At the end of paragraph 20 of the contested decision, the Board of Appeal thus stated that, in view of the goods at issue, a substantial part of the relevant public consists of average consumers. That definition of the relevant public has to be endorsed in the light of the aforementioned case-law and is moreover not contested either by the applicant or by the intervener. With regard to the level of attention of the average consumer, the Board of Appeal stated as follows: ‘35. With respect to the attentiveness and sophistication of the relevant public, even where the average consumer’s attention can be considered to be higher when purchasing pharmaceutical and other health-related products, such a consumer cannot be assumed to possess a level of sophistication comparable to that of a medical professional, which would enable him to safely distinguish between pharmaceutical marks with smaller differences. Unlike medical professionals, the average consumer is unlikely to have the relevant knowledge and experience and is not used to pharmaceutical trade marks, which often sound foreign and scientific, and as such, are more difficult to remember correctly. In the present case, the marks in dispute stand visually and phonetically so close to each other that the only difference in their sixth letters can even be overlooked or misheard.’ The applicant challenges that assessment. Whilst, like the Board of Appeal, it considers that the level of attention of the average consumer is high, or at least higher, when purchasing a health-related product, it infers from this, contrary to the Board of Appeal, that that level of attention allows the consumer to distinguish marks which are slightly different, because confusion would result in ‘particularly disagreeable consequences’. It has not, however, been established to the requisite legal standard that the inference suggested by the applicant can be validly drawn. There is nothing in the documents before the Court to support the conclusion that, in the case of names of pharmaceutical products based on a chemical nomenclature, even minute deviations can have a decisive importance (see, for that argument of the applicant, paragraph 13 of the contested decision). Nor can such an inference be validly drawn from common knowledge, contrary to what the applicant claims when asserting that this is a ‘fact well known to consumers’ (see paragraph 16 above). The average consumer does not have the knowledge that a professional in the sector would have with regard to the prescription of pharmaceutical products the marks of which are only slightly different. In addition, the concern to avoid the ‘particularly disagreeable consequences’ for health which might result from confusion between two pharmaceutical products justifies the adoption of a rather restrictive approach to the level of attention of the average consumer. Consequently, the applicant cannot call into question the level of attention of the average consumer in the European Union defined by the Board of Appeal in the contested decision. Comparison of the goods As the Board of Appeal stated in the contested decision, the goods at issue in Class 5 are identical and ‘soaps, hair lotions and dentifrices’, included in Class 3, which are covered by the mark applied for, have a very low degree of similarity with ‘sanitary products and disinfectants’, included in Class 5, which are covered by the earlier mark. This outcome of the comparison carried out by the Board of Appeal of the goods at issue is moreover not disputed. Comparison of the signs As regards comparison of the signs, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks in the mind of the average consumer of the goods or services at issue plays a decisive role in the global assessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-251/95 SABEL [1997] ECR I-6191 , paragraph 23; Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819 , paragraph 25; and Case C-334/05 P OHIM v Shaker [2007] ECR I-4529 , paragraph 35). According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335 , paragraph 30, and judgment of 26 January 2006 in Case T-317/03 Volkswagen v OHIM – Nacional Motor (Variant) , not published in the ECR, paragraph 46). – Visual comparison of the signs It must be found, as the Board of Appeal did in paragraph 22 of the contested decision, that, visually, both marks consist of eight letters, seven of which are identical and placed in the same order, and that the only difference, in the sixth letter (‘l’ or ‘t’), cannot change the finding that the signs are highly similar overall, taking particularly into account that both their beginnings and their ends are identical. In addition, the letters ‘l’ and ‘t’ are both characterised by a vertical line, which gives them a certain degree of similarity even though they are different letters. Moreover, it should be pointed out that the result of the visual comparison of the signs at issue is not as such contested by the applicant, which instead highlights the importance of a difference with regard to their pronunciation. – Phonetic comparison of the signs As regards the phonetic comparison of the signs, the Board of Appeal stated, in paragraph 23 of the contested decision, that the visual similarities found were reflected phonetically and that the only difference, relating to the sixth letter, could not affect the similar overall pronunciation of the marks. The applicant contests that assessment, stating that the difference in pronunciation referred to by the Board of Appeal means that the visual similarity between the signs at issue fades into the background and that a likelihood of confusion is precluded. Apart from the fact that that argument does not take into account the global nature of the assessment of the likelihood of confusion, which is carried out in the light of all of the relevant factors, it should be pointed out that no reasoning has been advanced in support of such an assertion, and the assertion is not sufficient to invalidate the abovementioned assessment of the Board of Appeal that the only phonetic difference observed cannot affect the similar overall pronunciation of the marks at issue. In any event, it cannot be contested that, even though the pronunciation of the letter ‘l’ in the mark applied for may differ from that of the letter ‘t’ in the earlier mark, that difference is not enough to affect the overall similarity between the signs at issue resulting from the fact that they each have three syllables of which two, ‘se’ and ‘ro’, are purely identical while the third syllable of each sign is dominated by the final sound ‘im’ (‘slim’ or ‘stim’). The difference between the letters ‘l’ and ‘t’ is all the less perceptible because the pronunciation of those letters is weakened, even swallowed, by the letter ‘s’. The manner in which the sounds are articulated also proves very alike. In addition, regardless of the language considered, the signs are pronounced according to the same rhythm, with the same intonation and stress. Consequently, the applicant cannot call into question the assessment of the Board of Appeal with regard to the phonetic comparison of the signs. – Conceptual comparison of the signs With regard to the conceptual comparison of the signs, in the contested decision the Board of Appeal, before concluding that such a comparison is irrelevant for a large part of the relevant public, stated as follows: ‘24. With respect to the conceptual comparison, the Board does not believe that the average consumer will engage [in] an etymological analysis of the marks. In particular, the Board does not consider that the consumer will immediately recognise the English word “slim” within the mark “SEROSLIM”. Moreover, as the applicant rightly contends, it cannot be expected that this English word will be understood throughout the EU. Further, the Board considers it somewhat farfetched to state that the consumer would identify the ending “-STlM” as the Romance root of stimulare in the earlier mark, as alleged by the applicant. Rather on the contrary, as already stated above, the consumer will view each mark as a whole, and will perceive them as made up words without any particular meaning and, consequently, inherently distinctive in relation to the goods at issue. In all, the signs in dispute do not have any precise conceptual meaning which could help consumers to [distinguish] between them.’ The Board of Appeal’s comparison is therefore based on the consideration that the signs at issue do not have a precise meaning for the average consumer in the European Union. For the relevant public, they are ‘fanciful marks’. In the context of that assessment, the Board of Appeal rejected the proposition put forward by the applicant that the average consumer can identify the meaning which can be given to the final syllable of the signs at issue, whether it be the element ‘slim’ the meaning of which in English refers to the idea of slimness, or the element ‘stim’ which refers to the Latin word ‘stimulare’ and conveys the idea of stimulation. The applicant’s argument does not consist of expressly contesting the idea that the signs at issue can be perceived, as a whole, as ‘fanciful marks’ but consists only of arguing that the different elements of the signs at issue, ‘sero’, ‘slim’ and ‘stim’, may have their own meanings and that, put together, they enable the signs to be distinguished on a conceptual level (see paragraph 16 above). That argument cannot be accepted for the following reasons. First, the meaning attributed by the applicant to the element ‘sero’ is based on the closeness of that term to the word ‘serum’. While it is not disputed by the parties that the word ‘serum’ refers to blood serum in certain languages of the European Union (for example, in English or, if it is written as ‘sérum’, in French), there is nothing to show that such a meaning may be important for the perception that the relevant public might have of the signs at issue on a conceptual level. The applicant recognises this moreover when it states that the relevant public ‘will not pay any special attention to this reference’. In addition, the meaning which the element ‘sero’ might have in the various Member States should be taken into consideration. The average Italian, Portuguese, Greek or Hungarian consumer would thus not perceive the meaning which is relied upon by the applicant for that term. Furthermore, even if the common element ‘sero’ were perceived by the relevant public as a reference to the word ‘serum’, that would go against the applicant’s argument and, on the contrary, be a factor which could be taken into consideration to establish a likelihood of confusion. Second, the meaning that the applicant attributes to the element ‘slim’ of the mark applied for, which in its submission refers to the English word ‘slim’ and is therefore understood as a reference to slimness, cannot be extended to the whole of the relevant public, in particular not to the part of the relevant public that is not English-speaking. On this point the applicant merely states that ‘the syllable “-slim” recalls the English root word “(to) slim”, which is well known in all the States of the Community’. The Board of Appeal correctly held in the contested decision that this English word is not understood in the whole of the European Union. Third, the meaning which the applicant attributes to the element ‘stim’ of the earlier mark, which in its submission refers to the Latin word ‘stimulare’ (to stimulate), is even more difficult to accept and to extend to all of the relevant public, namely the average consumer in the European Union. As pointed out by the Board of Appeal in the contested decision, it may seem overstated to assert that the average consumer in the European Union would identify such a term in that way, when it is not even established that it is currently used in one of the Member States. It therefore follows that the applicant cannot call into question the Board of Appeal’s analysis and the conclusion that it reached, namely that the signs at issue do not have ‘any precise conceptual meaning which could help consumers to distinguish between them’. – Overall assessment of the signs at issue It follows from all of the foregoing that the Board of Appeal was right to conclude in paragraph 25 of the contested decision that the signs at issue could be considered similar. Likelihood of confusion As has been pointed out in paragraph 20 of the present judgment, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular 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. In the present case, the Board of Appeal rightly found in paragraphs 34 to 36 of the contested decision that, taking account in particular of the level of attention of the average consumer when purchasing pharmaceutical and other health-related products (see paragraphs 25 to 28 above), the signs at issue will be viewed by the relevant public as ‘coined terms which do not have any particular meaning’, that they stand so close to each other visually and phonetically that the only difference, in their sixth letter, ‘can even be overlooked or misheard’ and that there is therefore a likelihood of confusion where the goods at issue are identical (goods at issue in Class 5). Furthermore, the Board of Appeal was also right in finding that the high degree of similarity between the signs compensates for the low degree of similarity between the goods in respect of ‘soaps, hair lotions and dentifrices’ in Class 3, which are covered by the mark applied for, resulting also in a likelihood of confusion with regard to those goods. Consequently, the applicant’s single plea in law, alleging breach of Article 8(1)(b) of Regulation No 40/94, must be dismissed, as must the action in its entirety. The applicant’s request that the intervener’s application for a ‘declaration of invalidity’ of the mark applied for be dismissed does not appear in any event to result in any way from the documents in the case, since the intervener filed a notice of opposition to the registration of the trade mark applied for and did not apply for a declaration of invalidity of a mark which had already been registered. Costs Under Article 87(2) of the Rules of Procedure of the 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 in accordance with the forms of order sought by OHIM and the intervener. Under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Therefore, the intervener’s application concerning the costs of the opposition proceedings before the Opposition Division is inadmissible, whereas its application concerning the costs of the appeal proceedings must be granted. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Market Watch Franchise & Consulting, Inc. to pay the costs. Azizi Cremona Frimodt Nielsen Delivered in open court in Luxembourg on 28 September 2010. [Signatures] * Language of the case: English. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII