Judgments nº T-261/19 of Tribunal General de la Unión Europea, January 20, 2021

• Resolution Date: January 20, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-261/19

(EU trade mark - Opposition proceedings - Application for the EU figurative mark OptiMar - Earlier national word mark Mar - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

In Case T-261/19,

Stada Arzneimittel AG, established in Bad Vilbel (Germany), represented by J.-C. Plate and R. Kaase, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,

defendant,

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

Optima Naturals Srl, established in Gallarate (Italy), represented by S. Brustia and E. Montelione, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 31 January 2019 (Case R 1348/2018-1), relating to opposition proceedings between Stada Arzneimittel and Optima Naturals,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann (Rapporteur), President, U. Öberg and O. Spineanu-Matei, Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 18 April 2019,

having regard to the response of EUIPO lodged at the Court Registry on 30 August 2019,

having regard to the response of the intervener lodged at the Court Registry on 16 September 2019,

having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Fifth Chamber,

having regard, in the context of the current health crisis due to the COVID-19 pandemic, to the postponement of the hearing scheduled for 10 June 2020,

having regard to the designation of another judge to complete the Chamber as one of its Members was prevented from attending,

further to the hearing on 22 September 2020, in the course of which documents were submitted by the applicant,

gives the following

Judgment

Background to the dispute

1 On 2 March 2016, the intervener, Optima Naturals Srl, 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 following figurative sign:

3 The goods in respect of which registration was sought are in Classes 3, 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 3: ‘Cleaning agents for household purposes; body sprays; soap; antiperspirants [toiletries]; dentifrice’;

- Class 5: ‘Pharmaceuticals; collyrium; hygienic lubricants; ophthalmologic preparations; medicinal sprays; antibacterial sprays; anti-inflammatory sprays; medicated dental rinses’;

- Class 10: ‘Medical apparatus and instruments; ear picks’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2016/48 of 10 March 2016.

5 On 10 June 2016, the applicant, Stada Arzneimittel AG, 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 the following earlier rights:

- the German word mark Mar, which was registered on 29 October 1958 under the number 719 079 and covers goods in Class 5 corresponding to the following description: ‘Medicines’;

- the German word mark MAR, which was registered on 20 December 2004 under the number 30 438 052 and covers goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides’;

- the international registration Mar of 30 January 1964, bearing the number 279 105 and designating Bulgaria, Austria and Finland, which covers goods in Class 5 corresponding to the following description: ‘Medicines’;

- the international registration MAR of 7 July 2006, bearing the number 894 152 and designating the Czech Republic, which covers goods in Class 5 corresponding to the following description: ‘Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic substances for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 At the intervener’s request, the applicant provided proof of use of its earlier marks.

9 On 16 May 2018, the Opposition Division found that the applicant had provided proof of genuine use of its earlier marks in connection with ‘medicated nasal sprays’ in Class 5 only in Germany. It took the view that there was a likelihood of confusion as regards the ‘pharmaceuticals; medicinal sprays; antibacterial sprays; anti-inflammatory sprays; collyrium; ophthalmologic preparations; medicated dental rinses’ in Class 5 and the ‘medical apparatus and instruments’ in Class 10 covered by the mark applied for. It therefore partially upheld the applicant’s opposition based on the German trade mark MAR, registered under the number 30 438 052, as regards medicated nasal sprays.

10 On 12 July 2018, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

11 By decision of 31 January 2019 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. First of all, it took the view that the Opposition Division’s finding that genuine use of the German trade mark registered under the number 30 438 052 had been proved only in connection with medicated nasal sprays had not been disputed and that therefore the Opposition Division’s decision had become final in that respect. Next, it found that, since the earlier mark was a German trade mark, the goods at issue were aimed at the German public, which, in view of those goods, displayed a high level of attention, whether that public was the general public or a more specialist public. In the context of the comparison of the goods concerned, it found that the medicated nasal sprays were similar or identical to the goods covered by the mark applied for, except for the ‘cleaning agents for household purposes, body sprays; soap, antiperspirants [toiletries]; dentifrice’ in Class 3, ‘medicated dental rinses’ and ‘hygienic lubricants’ in Class 5 and ‘ear picks’ in Class 10, which were found to be dissimilar. Furthermore, the Board of Appeal found that the marks at issue were visually and phonetically similar to a low degree and conceptually similar. It added that the distinctiveness of the earlier mark had to be considered to be weak. It concluded from this that the visual dissimilarities between the signs and the high level of attention of the relevant public could outweigh the conceptual similarity related to the element ‘mar’ and that there was therefore no likelihood of confusion on the part of the German public. Lastly, since proof of genuine use had been furnished only in respect of Germany, the Board of Appeal stated that the international registrations could be disregarded, as could the German trade mark registered under the number 719 079, which was identical to the earlier mark that had been examined and covered a narrower list of goods.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

13 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

14 The intervener contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs incurred before the Court and those incurred in the course of the opposition proceedings and before the Board of Appeal.

Law

15 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. It submits that there is a likelihood of confusion on the part of the relevant public so far as concerns the German trade mark registered under the number 30 438 052, which was examined, and the mark applied for.

16 Given the date on which the application for registration at issue was filed, namely 2 March 2016, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C-591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C-702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

17 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to Article 8(1)(b) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or...