Stada Arzneimittel v EUIPO - Pfizer (RUXXIMLA) (EU trade mark - Judgment) [2021] EUECJ T-239/20 (10 November 2021)

Judgment Background to the dispute On 26 February 2018, the applicant, Stada Arzneimittel AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). Registration as a mark was sought for the word sign RUXXIMLA. The goods in respect of which registration was sought are in Classes 5, 10 and 44 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 5: ‘Pharmaceutical preparations; veterinary preparations; medicine; sanitary preparations for medical purposes; dietary supplements and dietetic preparations; dietary supplements for humans; dietary supplements for animals; medical and veterinary preparations and articles; infant formula; diagnostic preparations; plasters, materials for dressings; dressings, medical; teeth filling material; dental impression materials; disinfectants; preparations for destroying vermin; fungicides; herbicides’; – Class 10: ‘Surgical instruments; medical and veterinary apparatus and instruments; dental apparatus and instruments; medical instruments for application on animal bodies; applicators for medications; medical apparatus for introducing pharmaceutical preparations into the human body; diagnostic apparatus for medical purposes; artificial limbs; artificial eyes; artificial teeth; orthopaedic articles’; – Class 44: ‘Medical services; providing of medical information relating to diseases and health problems, including online and on the internet; dissemination of medical information via an interactive platform’. On 15 June 2018, the intervener, Pfizer Inc., filed a notice of opposition to registration of the mark applied for. The opposition was based on the EU word marks RUXIMERA, registered on 4 December 2015 under number 14500821, RUXIENCE, registered on 24 February 2016 under number 14790968, and RUXMEOR, registered also on 24 February 2016, under number 14790943. The three earlier marks were registered in respect of goods in Class 5 of the Nice Agreement corresponding to the following description: ‘Pharmaceutical preparations; veterinary preparations; sanitary preparations for medical purposes’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation 2017/1001. By decision of 26 June 2019, the Opposition Division upheld the opposition in part, having based its examination on the earlier mark RUXIMERA. Specifically, it dismissed the opposition in respect of the goods ‘herbicides’ in Class 5 and ‘artificial limbs; artificial eyes; artificial teeth; orthopaedic articles’ in Class 10, and in respect of all the services in Class 44. On 22 August 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division. By decision of 13 February 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal found that the relevant public was the general public and the professional public in the medical and pharmaceutical fields and that the relevant territory was the European Union. Given the nature of the goods in question, the general public would pay a higher than average, if not high, level of attention, while the level of attention of the professional public would be high. When comparing the goods, the Board of Appeal found that the goods in question were in part identical, in part similar to an average degree and in part similar to a low degree. When comparing the trade marks at issue, the Board of Appeal found that they were visually and phonetically similar to an average degree and that the conceptual comparison was neutral, since neither of the marks conveyed any meaning. Taking into account all those factors and the normal degree of inherent distinctiveness of the earlier mark, the Board of Appeal found that there was a likelihood of confusion even where the level of attention of the relevant public was high. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs, including those of the appeal proceedings. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. The applicant claims, in essence, that the Board of Appeal erred in its assessment of the visual and phonetic similarity of the trade marks at issue and, as a result, wrongly concluded that there was a likelihood of confusion. EUIPO and the intervener dispute the applicant’s arguments. Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the trade 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). Since the earlier mark is an EU trade mark, the Board of Appeal found that the relevant territory for the purposes of analysing the likelihood of confusion was that of the European Union. It also found that the relevant public was the general public and the professional public in the medical and pharmaceutical fields. Given the nature of the goods in question, the general public would pay a higher than average, if not high, level of attention, while the level of attention of the professional public would be high. The applicant does not dispute those assessments by the Board of Appeal. Moreover, there is no evidence in the file capable of calling them into question. The comparison of the goods According to settled case-law, in assessing the similarity of the goods or services in question, 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). Like the Opposition Division, the Board of Appeal found that the goods in question were in part identical, in part similar to an average degree and in part similar to a low degree. The applicant does not dispute those assessments by the Board of Appeal. Moreover, there is no evidence in the file capable of calling them into question. The comparison of the signs As regards the visual comparison of the trade marks at issue, the applicant submits that the existence of a double letter ‘X’ in the mark applied for produces a striking visual effect and signals a special feature of the sign constituting that mark to the viewer. That double letter ‘X’ and the sequence formed by the fourth to seventh letters, ‘XIML’, create a strong overall impression which distinguishes the mark applied for from the earlier mark whose fourth to seventh letters form the sequence ‘IMER’. As a result, according to the applicant, the trade marks at issue have at most a below-average degree of similarity, ‘that is to say, no more than a very remote similarity’. In addition, the applicant submits, the contested decision is at variance with EUIPO’s decision-making practice, since the Board of Appeal failed to recognise the importance of the double letter ‘X’, which it had acknowledged in earlier decisions. As regards the phonetic comparison of the marks, the applicant submits that, because of the double letter ‘X’, the mark applied for necessarily contains a syllable break between that double consonant, giving the three syllables ‘RUX-XIM-LA’, pronounced ‘RUKS-KSIM-LA’. That mark is therefore very different from the earlier mark, which is composed of four syllables, that is to say, ‘RU-XI-ME-RA’, pronounced ‘RU-KSI-ME-RA’. By comparing the trade marks at issue syllable by syllable, the applicant considers that the first syllable of the earlier mark and the first syllable of the mark applied for are, at best, similar, but not identical, as the latter has a clearly audible additional ‘X’, pronounced ‘KS’. The second syllable of each mark also has at most a below-average similarity on account of the presence of the letter ‘M’ in the contested mark. The third syllable of the earlier mark has no equivalent in the mark applied for, which is an additional, particularly significant, difference. The final syllable of the trade marks at issue can be clearly distinguished from a phonetic perspective, since the consonant ‘R’ in the earlier mark has a much harder and therefore more striking sound than the softer consonant ‘L’ in the mark applied for. As a result, the applicant submits that, phonetically, the trade marks at issue have at most a below-average degree of similarity, ‘that is to say, no more than a very remote similarity’. EUIPO and the intervener dispute the applicant’s arguments. 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 components. 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). With regard, in the first place, to the visual comparison of the trade marks at issue, it should be noted that both of them consist of eight letters and are therefore of an identical length. The first five letters of the earlier mark, namely the letters ‘R’, ‘U’, ‘X’, ‘I’ and ‘M’, are to be found in the same order in the mark applied for, the only difference being that there is a double letter ‘X’ in the latter mark. The trade marks at issue also have their last letter in common, namely the letter ‘A’, with the result that six out of a total of eight letters are identical. Those marks differ in the presence of the letters ‘E’ and ‘R’ in the final part of the earlier mark, and the letter ‘L’ in the final part of the mark applied for, respectively. On account of those features of the trade marks at issue, the Board of Appeal was correct to find, in paragraph 18 of the contested decision, that there was an average degree of visual similarity between them. As regards the applicant’s argument that the double letter ‘X’ generally produces a striking visual effect, it should be recalled that it is apparent from the case-law cited in paragraph 37 above that the comparison of the signs must be made having regard to the overall impression given by those signs, as the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. It is apparent from paragraphs 38 and 39 above that, on the visual level, the trade marks at issue are similar overall. Furthermore, none of the evidence submitted by the applicant establishes that the double letter ‘X’ usually produces a striking visual effect in the perception of the relevant public. As to the applicant’s argument that the Board of Appeal failed to recognise the importance of the double letter ‘X’, shown in EUIPO’s previous decisions, it should be recalled that decisions concerning registration of a sign as an EU trade mark taken by the Boards of Appeal pursuant to Regulation 2017/1001 fall within the scope of circumscribed powers and are not a matter of discretion and, accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union. Accordingly, the Boards of Appeal cannot be bound by the previous decisions of EUIPO (see judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart) , T‑123/18, EU:T:2019:95 , paragraph 36 and the case-law cited). In the second place, as regards the phonetic comparison of the trade marks at issue, it should be stated, first of all, that the applicant has not shown that at least one of the languages spoken in the European Union applies one or more specific rules concerning the pronunciation of the double consonant ‘X’. Next, although it is true that, in those languages, some double consonants may be pronounced either as a sound that is different from that of the single consonant or as the single consonant pronounced twice, it should also be pointed out that double consonants are most often pronounced like single consonants or in a fairly similar manner. In those circumstances, it must be held that, at least in some of the languages spoken in the European Union, the double consonant ‘X’ can be pronounced in the same way as a single letter ‘X’. That finding is reinforced, in particular, by the pronunciation observed in respect of other trade marks with a structure very similar to that of the mark applied for, namely a double letter ‘X’ between two vowels. As EUIPO rightly argued at the hearing, in particular the trade mark ExxonMobil is pronounced with only one ‘KS’ sound, as is also apparent from the Oxford Learner’s Dictionaries online. Consequently, it may reasonably be considered that, at the very least, the English-speaking part of the relevant public will pronounce the groups of letters ‘RUXIM’ in the earlier mark and ‘RUXXIM’ in the mark applied for, as well as the final letter ‘A’ common to both marks, in an identical way, irrespective of the way in which the terms constituting the trade marks at issue are separated into syllables. As regards the applicant’s argument that the presence of the double letter ‘X’ requires the consecutive syllables to be split between those two consonants, it must be held that, assuming that such a rule exists, the applicant has not shown that it is common to all the languages of the European Union or that it would necessarily have an influence on the pronunciation of the double consonant ‘X’. As regards the consonants ‘L’ in the mark applied for and ‘R’ in the earlier mark, it should be stated that, as EUIPO rightly argues, they form part, at least in some languages of the European Union, of the family of ‘liquid’ consonants and are therefore phonetically close. Consequently, the Board of Appeal rightly concluded that the trade marks at issue were phonetically similar to an average degree. In the third and last place, as regards the conceptual comparison of the trade marks at issue, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that that comparison was neutral, since those marks did not convey any meaning in the relevant territory. Moreover, there is no evidence in the file capable of calling that assessment into question. The likelihood of confusion As regards the global assessment of the likelihood of confusion, the applicant submits that any risk can be ruled out, since there is a below-average degree of visual and phonetic similarity and since the relevant public pays a high level of attention in the case of health products. It argues that a likelihood of association is also ruled out. EUIPO and the intervener dispute the applicant’s arguments. 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 similarities between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In the present case, following the global assessment of the likelihood of confusion, the Board of Appeal found that, given the average degree of visual and phonetic similarity between the trade marks at issue as well as the identity and similarity of the goods in question and the normal degree of inherent distinctiveness of the earlier mark, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 could not be ruled out even in respect of the goods which are similar to a low degree and even taking into account a higher level of attention of the relevant public. That assessment by the Board of Appeal is correct. The Board of Appeal found, which the applicant has not disputed, that the goods in question were in part identical, in part similar to an average degree and in part similar to a low degree. Furthermore, it is apparent from the foregoing that, contrary to what the applicant submits, the trade marks at issue are visually and phonetically similar to an average degree, whereas the conceptual comparison is neutral. It should also be noted that the applicant does not dispute the Board of Appeal’s assessment that the earlier mark has a normal degree of inherent distinctiveness. Furthermore, the fact that the relevant public will be more aware of the identity of the producer or supplier of the product or service that it wishes to purchase does not mean that that public will examine the mark before it down to the smallest detail, or that it will compare that mark in minute detail to another mark. Even for a public displaying a high level of attention, it remains the case that the average consumer only rarely has the opportunity to compare the different marks directly, but must rely on his or her imperfect recollection of them (see judgment of 22 November 2018, Endoceutics v EUIPO – Merck (FEMIVIA) , T‑59/18, not published, EU:T:2018:821 , paragraph 65 and the case-law cited). Consequently, since the Board of Appeal took into account all the foregoing factors, it was right to find, in paragraph 26 of the contested decision, that there was a likelihood of confusion as regards the trade marks at issue. It follows that the single plea in law must be rejected as unfounded. The action must therefore be dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Stada Arzneimittel AG to pay the costs. Marcoulli Frimodt Nielsen Norkus Delivered in open court in Luxembourg on 10 November 2021. E. Coulon S. Gervasoni 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