Judgments nº T-644/18 of Tribunal General de la Unión Europea, November 28, 2019

• Resolution Date: November 28, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-644/18

(EU trade mark - Opposition proceedings - Application for EU word mark DermoFaes Atopiderm - Earlier EU word mark Dermowas - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-644/18,

Dr. August Wolff GmbH & Co. KG Arzneimittel, established in Bielefeld (Germany), represented by A. Thünken, lawyer,

applicant,

v

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

defendant,

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

Faes Farma, SA, established in Lamiaco-Leioa (Spain), represented by A. Vela Ballesteros and S. Fernandez Malvar, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 July 2018 (Case R 1305/2017-2) relating to opposition proceedings between Dr. August Wolff and Faes Farma,

THE GENERAL COURT (Fifth Chamber),

composed, at the time of deliberation, of D. Gratsias, President, G. De Baere and R. Frendo (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 October 2018,

having regard to the response of EUIPO lodged at the Court Registry on 5 February 2019,

having regard to the response of the intervener lodged at the Court Registry on 13 March 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1. Background to the dispute

   1 On 2 February 2016, the intervener, Faes Farma, SA, 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 DermoFaes Atopiderm.

   3 The goods in respect of which registration was sought are in Classes 1, 3 and 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, for each of those classes, to the following description:

   - Class 1: ‘Chemicals used in science, agriculture, horticulture and forestry; artificial fertilizers and chemical substances for preserving foodstuffs; chemical preparations for cosmetics’;

   - Class 3: ‘Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’;

   - Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.

   4 The EU trade mark application was published in Community Trade Marks Bulletin No 2016/52 of 16 March 2016.

   5 On 13 June 2016, the applicant, Dr. August Wolff GmbH & Co. KG Arzneimittel, filed a notice of opposition to registration of the mark applied for, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001). The opposition was directed against:

   - part of the goods in Class 1 covered by the application for registration, namely ‘chemical preparations for cosmetics’;

   - all the goods in Classes 3 and 5 covered by that application and listed in paragraph 3 above.

   6 The opposition was based on Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and the EU word mark Dermowas, registered on 29 October 2007 under No 5440111. The goods covered by that mark were in Classes 3 and 5 and corresponded, for each of those classes, to the following description:

   - Class 3: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions’;

   - Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; fungicides’.

   7 By decision of 30 May 2017, the Opposition Division upheld the opposition in part and rejected the registration of the mark applied for in respect of the following goods:

   - Class 3: ‘Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’;

   - Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.

   8 Moreover, the Opposition Division rejected the opposition for the goods in Class 1 and for ‘materials for stopping teeth’ in Class 5.

   9 On 19 June 2017, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), the intervener filed a notice of appeal against the decision of the Opposition Division in so far as it had rejected the application for registration in respect of the goods in Classes 3 and 5 listed in paragraph 7 above.

   10 By decision of 11 July 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. In essence, the Board of Appeal based its decision on the fact that the goods concerned in Class 3 were directed at the general public, whose level of attention is average. It also relied on the fact that the goods concerned in Class 5 were directed at professionals in the medical and pharmaceutical sectors, as well as the general public, since the level of attention of those two groups is high in the present case. Next, the Board of Appeal found that the prefix ‘dermo’, common to the marks at issue, had only a very weak distinctive character and that a descriptive or generic element such as ‘dermo’ should be given little importance; therefore, the consumer would essentially focus his attention on the other elements. Consequently, the Board of Appeal held that there was no likelihood of confusion between the marks at issue given the different endings ‘was’ and ‘faes’ of their first elements and the presence of the additional element ‘atopiderm’ in the mark applied for.

2. Forms of order sought

   11 The applicant claims that the Court should:

   - annul the contested decision;

   - uphold the opposition and reject the application for registration;

   - order EUIPO and the intervener to pay the costs, including those incurred before EUIPO.

   12 EUIPO contends that the Court should:

   - dismiss the action;

   - order the applicant to pay the costs.

   13 The intervener contends that the Court should:

   - dismiss the action;

   - uphold the contested decision;

   - order the applicant to pay the costs, including those incurred before EUIPO.

3. Law

   1. Annex numbered ‘A5’ annexed to the application

      14 The applicant annexed to its application an annex numbered ‘A5’. That annex is a reproduction of an extract of a page of the Wikipedia website which refers to the letter ‘æ’ of the Danish alphabet. According to the applicant, that extract proves that, in Denmark, the ending ‘faes’ of the mark applied for is pronounced as a single syllable, contrary to the Board of Appeal’s finding.

      15 EUIPO however rightly contends that that evidence was not produced in the course of the proceedings before EUIPO and that it is therefore inadmissible.

      16 Although the contested evidence consists merely of an extract of a website, it cannot be taken into consideration since it was produced for the first time before the Court. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation...