Judgments nº T-817/19 of Tribunal General de la Unión Europea, January 27, 2021

• Resolution Date: January 27, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-817/19

(EU trade mark - Opposition proceedings - Application for EU figurative mark Hydrovision - Earlier EU word mark Hylo-Vision - Relative ground for refusal - 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-817/19,

Olimp Laboratories sp. z o.o., established in Dębica (Poland), represented by M. Kondrat, lawyer,

applicant,

v

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

defendant,

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

OmniVision GmbH, established in Puchheim (Germany), represented by B. Sorg, D. Wiedemann and M. Ringer, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 September 2019 (Case R 2371/2018-2), relating to opposition proceedings between OmniVision and Olimp Laboratories,

THE GENERAL COURT (Second Chamber),

composed of V. Tomljenović, President, P. Škvařilová-Pelzl and I. Nõmm (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 27 November 2019,

having regard to the response of EUIPO lodged at the Court Registry on 6 March 2020,

having regard to the response of the intervener lodged at the Court Registry on 6 March 2020,

having regard to the measures of organisation of procedure of 9 July 2020 and the reply of the applicant lodged at the Court Registry on 23 July 2020,

having regard to the observations of EUIPO and the intervener on the reply of the applicant lodged at the Court Registry on 13 and 17 August 2020, respectively,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks following 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 25 January 2017, the applicant, Olimp Laboratories sp. z o.o., 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 trade mark was sought for the following figurative mark:

   

   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 to the following description: ‘Pharmaceutical preparations, Pharmaceutical preparations for the treatment of eye diseases and conditions; Medical preparations; Eye drops, Preparations for ocular lubrication, Medicated eye-washes, Eye lotions for medical use; Topical anti-infective substances for the treatment of infections of the eye; Cachets for pharmaceutical purposes, Capsules for medicines, Lozenges for pharmaceutical purposes, Lozenges for pharmaceutical purposes; Medicines for human purposes, Tonics [medicines], Medicines for medical purposes, Adjuvants for medical purposes, Medicaments in liquid form; Ointments for pharmaceutical purposes, Eye ointment for medical use; Eye pads for medical use, Eye compresses; analgesic and anti-inflammatory preparations; Medicinal herbs’.

   4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2017/052 of 16 March 2017.

   5 On 14 June 2017, the intervener, OmniVision GmbH, 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 all the goods referred to in paragraph 3 above.

   6 The opposition was based on the earlier EU word mark Hylo-Vision, which had been registered on 15 November 2016 under the number 15 692 866 covering goods in Class 5 corresponding to the following description: ‘Dietary supplements and dietetic preparations; Medical and veterinary preparations and articles’.

   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 By decision of 8 October 2018, the Opposition Division upheld the opposition, holding that there was a likelihood of confusion in respect of all of the goods covered by the mark applied for.

   9 On 4 December 2018, 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.

   10 By decision of 13 September 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. In the first place, it observed, in essence, that the relevant public was made up of medical professionals and pharmacists and consumers belonging to the general public with a higher than average degree of attentiveness. Moreover, it relied, for the purposes of assessing the likelihood of confusion, on the German-speaking portion of the public.

   11 In the second place, the Board of Appeal took the view, as had the Opposition Division, that the goods covered by the mark applied for were identical to those designated by the earlier mark.

   12 In the third place, the Board of Appeal observed that no element making up the signs in question could be regarded as being more dominant than the others. It considered that the element ‘vision’ in the marks at issue and the element ‘hydro’ in the mark applied for had a weak distinctive character in relation to the goods in question and that the element ‘hylo’ of the earlier mark was distinctive in relation to those goods. It compared those signs as a whole and found that they were visually similar to an average degree, highly similar phonetically and that, conceptually, either they were partially similar or the conceptual comparison was neutral.

   13 In the fourth place, regarding the distinctive character of the earlier mark, the Board of Appeal took the view that, even though the earlier mark contained elements that either were not distinctive or had weak distinctive character, namely the element ‘vision’, the combination of that element with the element ‘hylo’ conferred on it an average inherent degree of distinctiveness.

   14 In the fifth and last place, the Board of Appeal observed, in essence, that the goods in question were identical and that the signs in question were visually and phonetically similar overall, and, to a certain extent, conceptually similar. It thus concluded that there was a likelihood of confusion at the very least for a portion of the German-speaking public.

2. Forms of order sought

   15 The applicant claims that the Court should:

   - annul the contested decision and refer the case back to EUIPO for reconsideration; or

   - alter the contested decision by holding that there are no grounds for refusal of registration of the mark applied for in respect of all the goods in Class 5 and that that mark must be registered;

   - order EUIPO to pay the costs.

   16 EUIPO contends that the Court should:

   - dismiss the action for annulment in its entirety;

   - order the applicant to pay the costs incurred by EUIPO.

   17 The intervener contends that the Court should:

   - dismiss the action in its entirety;

   - order the applicant to pay the costs.

3. Law

   A. The regularity of the document provided by the applicant’s representative certifying that he is authorised to practise before the courts of a Member State

   18 In its response, EUIPO submits that the certificate provided by the applicant’s representative, produced as Annex 2 to the application, does not satisfy the requirements of Article 19 of the Statute of the Court of Justice of the European Union in so far as that document raises doubts as to whether that representative is authorised to practise before the courts of a Member State.

   19 In response to the measure of organisation of procedure of 9 July 2020 addressed to it, the applicant, by letter of 23 July 2020, lodged an additional document certifying that its representative was authorised to practise before the courts of a Member State in accordance with Article 19 of the Statute of the Court of Justice of the European Union at the time when the action was brought.

   20 In its written observations of 17 August 2020, the intervener observes that the document lodged by the applicant is not translated into the language of the case, namely English, and submits that, as a result, it does not comply with the formal requirements imposed by the Rules of Procedure and cannot be taken into account.

   21 In that regard, it should be borne in mind that, under Article 51(2) of the Rules of Procedure, a lawyer acting for a party must lodge at the Court Registry a certificate attesting to the fact that he or she is authorised to practise before a court of a Member State or of another State which is a party to the European Economic Area (EEA) Agreement. That provision does not require that such a certificate be translated into the language of the case.

   22 Although it is true that Article 46(2) of the Rules of Procedure provides that any material produced or annexed that is expressed in a language other than the language of the case must be translated, it should be noted that the document produced by the applicant was lodged pursuant to Article 51(2) of those rules and that the certificates showing that the parties’ representatives are members of the Bar are intended first and foremost for the Court, so that it can ascertain whether the parties are properly represented. This admissibility criterion relates to public policy and the...