Judgments nº T-380/18 of Tribunal General de la Unión Europea, November 07, 2019

• Resolution Date: November 07, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-380/18

(EU trade mark - Opposition proceedings - Application for the EU word mark INTAS - Earlier EU and national figurative trade marks including the word element ‘indas’ - Relative ground for refusal - Likelihood of confusion - Similarity of the signs and of the goods - Article 8(1)(b) of Regulation (EU) 2017/1001 - Proof of genuine use of the earlier marks - Article 47 of Regulation 2017/1001) In Case T-380/18,

Intas Pharmaceuticals Ltd, established in Ahmedabad (India), represented by F. Traub, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,

defendant,

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

Laboratorios Indas, SA, established in Pozuelo de Alarcón (Spain), represented by A. Gómez López, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 16 April 2018 (Case R 815/2017-4), relating to opposition proceedings between Laboratorios Indas and Intas Pharmaceuticals,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 25 June 2018,

having regard to the response of EUIPO lodged at the Court Registry on 1 October 2018,

having regard to the response of the intervener lodged at the Court Registry on 5 October 2018,

further to the hearing on 8 May 2019,

gives the following

Judgment

Background to the dispute

1 On 26 May 2015, the applicant, Intas Pharmaceuticals Ltd, 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), as amended (replaced by 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)).

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

3 The goods in respect of which registration was sought are in Classes 5 and 10 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: ‘Prescription-only human or veterinary medicines for parenteral, enteral, rectal, sublingual or oral administration; prescription-only human or veterinary medicines for intravenous or oral administration; prescription-only human or veterinary medicines for topical application’;

- Class 10: ‘Medical or veterinary injection apparatus and instruments; medical or veterinary syringes; syringes pre-filled with prescription-only medicines’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2015/113 of 19 June 2015.

5 On 17 September 2015, the intervener, Laboratorios Indas, SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on, inter alia, first, the earlier EU figurative mark which was registered on 17 January 2005 under the number 3380524 and has been renewed until 2 October 2023 and, secondly, the earlier Spanish figurative mark which was registered on 7 October 1994 under the number 2698682(5) and has been renewed until 7 October 2024.

7 The earlier EU trade mark is reproduced below:

8 The goods covered by the earlier EU trade mark are in, inter alia, Class 10 and correspond to the following description: ‘Disposable products for use during medical or surgical procedures, including disposable garments worn by either patients or medical/surgical personnel for protection from contamination or infection; sterile bandages; table covers, towels, surgical drapes designed to protect the operational area of the patient from contamination during surgery, and other disposable surgical components sold individually or in combination as surgical packs designed for various types of surgery’.

9 The earlier national trade mark is reproduced below:

10 The goods covered by the earlier national trade mark are in, inter alia, Class 5 and correspond to the following description: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, and for dental wax; disinfectants’.

11 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

12 Following a request made by the applicant and in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), EUIPO invited the intervener to furnish proof of genuine use of the earlier trade marks that had been relied on in support of the opposition. The intervener complied with that request within the time limit set.

13 On 28 March 2017, the Opposition Division upheld the opposition in its entirety.

14 On 24 April 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

15 By decision of 16 April 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal in its entirety. In the first place, in paragraphs 16 to 34 of the contested decision, the Board of Appeal assessed whether the intervener had furnished proof of genuine use of the earlier marks. In that regard, first, it found that proof of genuine use of the earlier EU trade mark had been furnished in connection with the goods in Class 10 referred to in paragraph 8 above. Secondly, it took the view that proof of genuine use of the earlier national trade mark had been furnished in connection with ‘gauze dressing’ and ‘pure cotton’ which, used together, corresponded to the ‘materials for dressings’ in Class 5.

16 In the second place, in paragraphs 35 to 52 of the contested decision, the Board of Appeal found that, taking into account the average degree of visual similarity, the high degree of phonetic similarity, the lack of impact of the conceptual comparison of the signs at issue, the normal degree of inherent distinctiveness of the earlier marks and the average degree of similarity between the goods covered by the marks at issue, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, with regard to all the goods covered by the mark applied for, even if the relevant public, consisting of the general public and of professionals in the medical field, displayed a high level of attention. Lastly, since the opposition had been upheld on the basis of the grounds laid down in Article 8(1)(b) of Regulation 2017/1001 and on the basis of the inherent distinctiveness of the earlier marks at issue, the Board of Appeal took the view, in paragraph 53 of the contested decision, that there was no need to assess the enhanced distinctiveness of those trade marks and to take into account the other grounds and earlier rights invoked in support of the opposition.

Forms of order sought

17 The applicant claims that the Court should:

- annul the contested decision;

- in the alternative, alter the contested decision to state that the opposition should be remitted to the Opposition Division;

- order EUIPO and the intervener, jointly and severally, to pay the costs incurred in the present action and the costs incurred before the Board of Appeal.

18 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

19 The applicant puts forward a single plea in law which consists, in essence, of two parts. The first part alleges infringement of Article 47 of Regulation 2017/1001, inasmuch as the Board of Appeal erred in finding that proof of genuine use of the earlier trade marks at issue had been furnished. The second part alleges that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

Preliminary observations

20 In the first place, it is important to note that, at the hearing, the applicant withdrew its second head of claim, a fact of which formal note was taken by the Court in the minutes of the hearing.

21 In the second place, it must be pointed out that, when questioned at the hearing, the applicant stated to the Court that, by the letter which it had lodged at the Court Registry on 5 November 2018, it wished solely to inform the Court that a restriction of the goods in Class 5 had been registered by EUIPO, but that that restriction did not have any legal consequences as regards the present proceedings.

22 Accordingly, the Court’s examination will relate to the goods in Class 5 referred to in paragraph 3 above and will not take into account the information, in the letter of 5 November 2018 referred to in paragraph 21 above, that ‘[the goods covered by the mark applied for in that class do not include] inhalation products for the treatment of respiratory diseases’.

Admissibility

The arguments which the applicant put forward at the hearing

23 EUIPO and the intervener submit that three arguments which the applicant put forward at the hearing are inadmissible on the ground that those arguments were not put forward in the application.

24 The arguments which the applicant put forward at the hearing are summarised below.

25 First, the applicant submits...