Judgments nº T-632/15 of Tribunal General de la Unión Europea, June 21, 2017

• Resolution Date: June 21, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-632/15

(EU trade mark - Opposition proceedings - Application for EU word mark OCTASA - Earlier German and Benelux word marks PENTASA - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009) In Case T-632/15,

Tillotts Pharma AG, established in Rheinfelden (Switzerland), represented by M. Douglas, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Ferring BV, established in Hoofddorp (Netherlands), represented by D. Slopek, lawyer, and I. Fowler, Solicitor,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 September 2015 (Case R 2386/2014-4), relating to opposition proceedings between Ferring and Tillotts Pharma,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 10 November 2015,

having regard to the response of EUIPO lodged at the Court Registry on 5 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 29 January 2016,

having regard to the written questions put by the Court to the parties and their answers to those questions lodged at the Court Registry on 8, 17 and 18 November 2016,

further to the hearing on 26 January 2017,

gives the following

Judgment

Background to the dispute

1 On 20 March 2009, the applicant, Tillotts Pharma AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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)).

2 Registration as a mark was sought for the word sign OCTASA.

3 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, following the limitation made during the proceedings before EUIPO, to the following description: ‘Preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 21/2009 of 8 June 2009.

5 On 8 September 2009, the intervener, Ferring BV, 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 covered by that mark.

6 The opposition was based, inter alia, on the following earlier marks:

- Benelux word mark PENTASA, registered on 1 December 1981, registration No 377513, designating, inter alia, ‘pharmaceutical preparations’ in Class 5;

- German word mark PENTASA, registered on 8 October 1991, registration No 1181393, designating ‘medicinal products’ in Class 5.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 and in Article 8(5) of that regulation.

8 Reputation was claimed by the intervener for the earlier German and Benelux marks in relation to all the goods for which those marks were registered. By letter of 21 April 2010, it produced a number of documents to attest to the reputation claimed.

9 On 5 July 2010, the applicant requested proof of genuine use of the earlier trade marks. By letter of 9 November 2010, the intervener produced various documents in order to demonstrate that the earlier marks had been put to genuine use for the purposes of Article 42(2) and (3) of Regulation No 207/2009.

10 On 19 April 2011, the Opposition Division rejected the opposition.

11 On 7 June 2011, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12 By decision of 6 September 2012 (‘the first decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

13 By application lodged at the Court Registry on 19 November 2012, the intervener brought an action before the General Court challenging the first decision.

14 By judgment of 9 April 2014, Ferring v OHIM - Tillotts Pharma (OCTASA), (T-502/12, not published, EU:T:2014:192), the General Court annulled the first decision. It held that, in that decision, the Board of Appeal had infringed Article 8(1)(b) of Regulation No 207/2009 by refraining from carrying out a global assessment, taking into account all factors relevant to the circumstances of the case, of the likelihood of confusion between the earlier Benelux mark and the mark applied for.

15 On 5 September 2014, the applicant requested that the specification of the list of goods covered by the contested mark be amended to: ‘Preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract containing 5-aminosalicylic acid (5-ASA) for sale only by the prescription of a medical practitioner’.

16 By decision of 7 September 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the decision of the Opposition Division, upheld the opposition and refused the application for registration of an EU trade mark. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the earlier German and Benelux marks, on the one hand, and the mark applied for, on the other, in relation to the goods covered by the latter.

17 In paragraphs 32 to 35 of the contested decision, the Board of Appeal refused the request for amendment of the specification of the goods covered by the contested mark mentioned in paragraph 3 above.

18 As regards the existence of a likelihood of confusion between the earlier German and Benelux marks, on the one hand, and the mark applied for, on the other, in relation to the goods covered by the latter, the Board of Appeal stated, in paragraph 41 of the contested decision, that the relevant territories for analysing the likelihood of confusion were those of Germany and the Benelux countries, and that the relevant public consisted of the public at large and the professional medical public in those territories. In paragraphs 42 to 47 of the contested decision, the Board of Appeal stated that the intervener had demonstrated that the earlier German and Benelux marks had been put to genuine use for pharmaceutical products prescribed for the treatment of diseases of the gastro-intestinal tract in the relevant territories during the relevant period. In paragraph 48 of that decision, it stated that those products were identical to the goods covered by the mark applied for, that is to say, ‘preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract’. In paragraphs 49 to 54 of the contested decision, which concern the comparison of the signs, the Board of Appeal stated that, first of all, visually, there was a certain degree of similarity between the signs and that this was below average. Second, regarding phonetic similarity, it found, again, that there was a certain degree of similarity between the signs and that this was below average. Third, for some users, there was weak conceptual similarity, inasmuch as they would recognise that the first part of the signs, ‘penta’ and ‘octa’, referred to Greek numbers. In paragraphs 45, 46 and 59 of the contested decision, the Board of Appeal held that the intervener had claimed and proved the enhanced distinctiveness of the...