JUDGMENT OF THE GENERAL COURT (Third Chamber)

3 May 2016 (*)

(EU trade mark — Opposition proceedings — Application for EU figurative mark Dynamic Life — Earlier national word mark DYNAMIN — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑454/15,

Laboratorios Ern, SA, established in Barcelona (Spain), represented by M. Pérez Serres, R. Guerras Mazón, S. Correa Rodríguez and T. González Martínez, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Matthias Werner, residing in Neufahrn (Germany),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 May 2015 (Case R 441/2014-4), relating to opposition proceedings between Laboratorios Ern and Mr Werner,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas (Rapporteur), President, E. Bieliūnas and I.S. Forrester, Judges,

Registrar: E. Coulon,

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

having regard to the response lodged at the Court Registry on 3 November 2015,

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 therefore 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

 Background to the dispute

1        On 29 October 2012, Mr Matthias Werner 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).

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 5 and 32 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: ‘Dietary supplements for humans and animals; Tobacco-free cigarettes for medical purposes; Vitamin preparations; Medicinal drinks’;

–        Class 32: ‘Fruit beverages and fruit juices; Fruit juice concentrates (non-alcoholic drinks); Beer’.

4        The EU trade mark application was published in the Community Trademarks Bulletin No 2012/227 of 28 November 2012.

5        On 27 February 2013, the applicant, Laboratorios Ern, SA, filed a notice of opposition under Article 41 of Regulation No 207/2009 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 earlier Spanish word mark DYNAMIN, covering goods in Classes 1 and 5 and corresponding, for each of those classes, to the following description:

–        Class 1: ‘Chemical products and specifics’;

–        Class 5: ‘Dietetic foods adapted for medical use in any shape or form’.

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

8        On 16 December 2013, the Opposition Division rejected the opposition in its entirety.

9        On 7 February 2014, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      By decision of 27 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the drinks covered by the mark applied for and the ‘dietetic foods adapted for medical use in any shape or form’ covered by the earlier mark were different, that the ‘dietary supplements for humans and animals’ and ‘vitamins’ in Class 5 covered by the mark applied for, on the one hand, and the ‘dietetic foods adapted for medical use in any shape or form’ covered by the earlier mark, on the other hand, were at most highly similar, and that the ‘medicinal drinks’ covered by the mark applied for were identical to the ‘dietetic foods adapted for medical use in any shape or form’ covered by the earlier mark. It also held that the signs at issue were visually and phonetically similar to a low degree and that they were not conceptually similar. The Board of Appeal concluded that, taking into account the normal distinctive character of the earlier mark and the heightened level of attention of the relevant public for goods for medical use, there was no likelihood of confusion.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the application for registration of the EU trade mark;

–        order EUIPO to pay the costs.

12      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant raises a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. Accordingly, it maintains that there is a likelihood of confusion between the signs at issue within the meaning of those provisions.

14      In that regard, it should be noted that under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the mark applied for.

15      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services in question, and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

16      For the purposes of the application of Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they designate are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

 The relevant public

17      The Board of Appeal took the view that the goods at issue were directed at the public at large. It added that the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, it made an exception for the goods in Classes 1 and 5 for medical use, which attract a heightened degree of attention on the part of consumers. Lastly, it held that, since the respondent had invoked an earlier Spanish trade mark, the relevant territory was Spain. The applicant does not dispute those findings. They must, in any event, be upheld as they are free from error.

 The comparison of the goods

18      In this respect, it should be recalled that, according to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

19      The applicant argues that, contrary to what the Board of Appeal held in the contested decision, the goods at issue are identical, highly similar or at least closely related.

20      First, by claiming that, contrary to what had been held by the Board of Appeal, the ‘dietary supplements for humans and animals’ and ‘vitamin preparations’ in Class 5, covered by the mark applied for, and the ‘dietetic foods adapted for medical use in any shape or form’ in Class 5, covered by the earlier mark, were highly similar, the applicant does not seriously call into question the assessment of the Board of Appeal that those goods were at most highly similar. In those circumstances, the applicant’s argument must be rejected.

21      Secondly, the applicant argues that the ‘tobacco-free cigarettes for medical purposes’ in Class 5 covered by the mark applied for are similar in their purpose to the ‘dietetic foods adapted for medical use in any shape or form’ in Class 5 covered by the earlier mark.

22      In the present case, it is apparent from the contested decision that the Board of Appeal held that ‘tobacco-free cigarettes for medical purposes’ are not a dietetic foodstuff.

23      In that regard, it must be borne in mind that ‘dietetic foods adapted for medical use in any shape or form’ are intended to treat certain health problems, as the detail concerning ‘medical use’ indicates. Nevertheless, and even if that detail exists also in regard to tobacco-free cigarettes, inferring a similar purpose, as the applicant claims, it must be held that those two types of goods are different in the light of the case-law referred to in paragraph 18 above. As the Board of Appeal rightly held, those goods are of a different nature, in that ‘tobacco-free cigarettes for medical purposes’ are not a dietetic foodstuff. Furthermore, those cigarettes are not used in the same way as ‘dietetic foods adapted for medical use in any shape or form’, with the result that the respective uses of those types of goods are different. In addition, ‘tobacco-free cigarettes for medical purposes’ and ‘dietetic foods adapted for medical use in any shape or form’ are not in competition with each other. Although they may relate to health, they cannot be used to prevent or treat the same conditions and are not, therefore, interchangeable. Lastly, those goods are not complementary either since, although they have the objective of improving the health of those who use them, neither is indispensable or decisive for the use of the other. Therefore, as the Board of Appeal rightly held, ‘tobacco-free cigarettes’ and ‘dietetic foods adapted for medical use in any shape or form’ are different.

24      Thirdly, the applicant maintains that the drinks in Class 32 covered by the mark applied for and the ‘dietetic foods adapted for medical use in any shape or form’ covered by the earlier mark are highly similar. In that regard, it states that the line between nutritional products for medical use and those for non-medical use is very thin. It adds that the purpose of those products is to provide nutritional substances to the human body to improve its general condition and to prevent or cure diseases or illnesses.

25      That argument cannot succeed. As the Board of Appeal rightly notes, ‘dietetic foods adapted for medical use in any shape or form’ have as their primary purpose the treatment or prevention of illnesses or diseases. However, the goods in Class 32 covered by the mark applied for have the objective of quenching thirst or have as a characteristic, in respect of beers, that they benefit from the alcohol content of that type of drink. The two types of goods at issue, therefore, have different purposes. In addition, as the Board of Appeal, moreover, stated, the goods in Class 32 have not been adapted by the manufacturer for a specific medical use but are everyday consumer goods for the general public as a whole. They are, therefore, of a different nature to ‘dietetic foods adapted for medical use in any shape or form’. In those circumstances, the Board of Appeal did not err in taking the view that the drinks in Class 32 were different from the ‘dietetic foods adapted for medical use in any shape or form’ covered by the earlier mark.

26      Fourthly, it is clear that the applicant does not challenge the other findings of the Board of Appeal concerning the comparison of the goods at issue. It is, therefore, necessary to endorse those findings since they are free from error.

27      It follows from the foregoing that, as the Board of Appeal rightly held, the goods at issue are either dissimilar, similar to a low degree, similar to a high degree or identical.

 The comparison of the signs

28      As regards the comparison of the signs, it should be noted that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

29      The assessment of similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, with the result that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

30      It should be observed at the outset that the signs to be compared are, first, the mark applied for, which is a composite mark consisting of a figurative element suspended over the word elements ‘dynamic’ and ‘life’ and, secondly, the word mark DYNAMIN. With regard to the mark applied for, it should be noted that the figurative element which forms it is rounded in shape and is crossed by an arc the colour of which goes from orange to yellow. Within that element it is possible to distinguish three elements resembling plant leaves, only the ends of which can be seen, and from which coloured rays emerge. It is noteworthy that that figurative element is embellished with bright colours. As regards the two word elements of the mark applied for, it should be noted that they consist of the words ‘dynamic’ and ‘life’, which begin with a capital letter, are large in size, and are coloured blue.

31      It follows from the foregoing that, contrary to what is argued by the applicant, the term ‘dynamic’ cannot be considered to be dominant in the mark applied for. That term dominates neither the term ‘life’, which is represented in the same way, nor the figurative element, which occupies a significant place in the sign in view, in particular, of its size, its position and its bright colours. Consequently, the comparison between the signs at issue must be made by considering the mark applied for in its entirety, the overall impression made in the minds of the relevant public by that mark not being, in the present case, dominated by any of its component parts.

32      First, the Board of Appeal took the view that the signs at issue had a low degree of visual similarity.

33      The applicant maintains, on the contrary, that there is a manifest visual similarity between the earlier mark and the mark applied for. It submits that, in the mark applied for, the term ‘dynamic’ is dominant inasmuch as it is placed at the start of the expression ‘dynamic life’. According to the applicant, that term is almost identical to the earlier mark. It concludes that the only difference between them, namely their last letters, is not sufficient to avoid a likelihood of confusion.

34      In the present case, it should be noted that in each of the signs at issue there are six identical letters out of seven, placed in the same order. It should also be noted, as, moreover, the Board of Appeal rightly did so, that the last letter of the earlier mark differs from that of the first word element of the mark applied for in so far as the letters ‘n’ and ‘c’, respectively, are concerned. Furthermore, the first word element of the mark applied for is followed by the term ‘life’, over which there features a striking figurative element. In those circumstances, it must be held that the signs at issue, each considered as a whole, have a low degree of visual similarity, as the Board of Appeal correctly held.

35      That assessment is not called into question by the applicant’s argument that a Spanish court recognised that visual similarities existed between the marks DYNAMIN and DYNAMIC, in so far as those marks differ from the marks at issue. In any event, such a situation has no bearing on the outcome of the present case. According to the case-law, although, in the interpretation of EU law, neither the parties nor the Court can be prevented from drawing on elements taken from national case-law, that case-law does not bind the Court, since the EU trade mark system is an autonomous system the application of which is independent of all national systems (see judgment of 11 February 2015 in Fetim v OHIM — Solid Floor (Solidfloor The professional’s choice), T‑395/12, not published, EU:T:2015:92, paragraph 31 and the case-law cited).

36      Secondly, the Board of Appeal found that the signs at issue displayed only a low degree of phonetic similarity.

37      As a preliminary point, it must be noted that, phonetically, the pronunciation of a composite sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level (judgment of 25 May 2005 in Creative Technology v OHIM — Vila Ortiz (PC WORKS), T‑352/02, EU:T:2005:176, paragraph 42). Consequently, with regard to the mark applied for, the figurative element must not be taken into account in the phonetic comparison of the signs at issue.

38      In that regard, it should be noted that the word elements of the mark applied for consist of five syllables, whereas the earlier mark consists of only three. Furthermore, the first two syllables of the mark applied for are pronounced in the same way as the first two syllables of the earlier mark. On that point, the applicant submits that, contrary to the view taken by the Board of Appeal, the final ‘c’ in the mark applied for does not create a very different phonetic impression from that of the ‘n’ in the earlier mark. On the contrary, the sound produced by those letters is very different and will be clearly perceived by the relevant public. The pronunciation of the letter ‘c’ and of the letter ‘n’ differs very clearly, ‘c’ being an occlusive consonant, whereas ‘n’ is an alveolar consonant. Furthermore, it must be held that that difference in pronunciation is accentuated by the pronunciation of the second word of the mark applied for, ‘life’, which has no equivalent in the earlier mark. Therefore, it must be held that the mere fact that the signs at issue feature two syllables which are pronounced identically is not sufficient to lead the relevant public to make a connection between those signs on the basis of phonetic perception.

39      That finding is not called into question by the applicant’s arguments. Thus, the applicant argues that in Spanish the letter ‘y’ is used as a consonant when it appears inside a word. According to it, the fact that in the mark applied for and in the earlier mark the letter ‘y’ is used as a vowel creates a strong impression in the mind of consumers and increases the likelihood of confusion. In that regard, it is sufficient to note that, while it is common ground that the signs at issue have some similarities, including the use of the letter ‘y’ as a vowel, the differences between them lead to the conclusion that, on the basis of an overall impression, they have only a low degree of phonetic similarity.

40      In those circumstances, the Board of Appeal did not err in finding that the signs at issue have only a low degree of phonetic similarity.

41      Thirdly, the Board of Appeal held that, since the earlier mark was without meaning for the relevant public, the signs at issue were not conceptually similar. It nevertheless noted that the earlier mark was at most vaguely allusive because of its clear differences from the Spanish word ‘dinámico’. By contrast, in relation to the mark applied for, it held that the term ‘dynamic’ was more similar to the Spanish word ‘dinámico’ but that neither the word ‘life’ nor the figurative element evoked any concept for the general public in Spain.

42      The applicant submits that the fact that the last letter of the term ‘dynamic’ in the mark applied for differs from the last letter of the earlier mark is not sufficient to support the conclusion that those signs are different and that the public will assign different meanings to them. It concludes from this that, should Spanish consumers associate the term ‘dynamic’ with the Spanish word ‘dinámico’, they would do the same with the earlier mark.

43      In that regard, suffice it to note that, as the Board of Appeal rightly held, the earlier mark does not refer to any concept. Furthermore, contrary to what is argued by the applicant, while it is possible to hold that the Spanish public will associate the term ‘dynamic’ with the Spanish word ‘dinámico’, it must be held that such an association with the earlier mark is unlikely, particularly because of its last letter.

44      In those circumstances, the Board of Appeal did not err in holding that the signs at issue were not conceptually similar.

 The likelihood of confusion

45      It must be borne in mind, in this regard, that the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

46      As is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with a lower distinctive character (see, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, EU:C:1997:528, paragraph 24; 29 September 1998 in Canon, C‑39/97, EU:C:1998:442, paragraph 18; and 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 20).

47      The Board of Appeal found that neither the striking figurative element of the contested mark nor the term ‘life’ would be considered by the relevant public to be descriptive. It held, nevertheless, that it was not possible to exclude those elements from the comparison of the signs on the ground that they were negligible. Furthermore, given the heightened level of awareness of the relevant public for goods for medical use, it observed that it was likely that that public would also notice the difference between the earlier mark and the first word element of the contested mark, which added to the different overall impression created by each sign. The Board of Appeal also noted that the signs at issue were visually and phonetically similar to only a low level. Having regard to all of those factors, the Board of Appeal held that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, given that the substantial differences existing between the signs were sufficient to enable the public to distinguish them, even in the case of identical goods.

48      The applicant submits that, having regard to the similarities existing between the goods at issue and between the signs at issue, consumers could easily confuse one mark with the other. From this it concludes that there is a likelihood of confusion.

49      As a preliminary point, it should be noted that the Board of Appeal held that the earlier mark had a normal distinctive character. That assessment, which has not been challenged, is without error and must be endorsed.

50      In the present case, it follows from all of the foregoing that, in the light, in particular, of the normal distinctive character of the earlier mark, the average or even high level of attention in respect of a portion of the goods at issue, the low degree of visual and phonetic similarity between the signs, and the lack of conceptual similarity, there is, notwithstanding the identical character of certain goods, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the signs at issue.

51      It follows from the foregoing that the action must be dismissed in its entirety, without it being necessary to examine the admissibility of the applicant’s claim that the application for registration of the mark applied for should be rejected.

 Costs

52      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Third Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Laboratorios Ern, SA, to pay the costs.

Papasavvas

Bieliūnas

Forrester

Delivered in open court in Luxembourg on 3 May 2016.

[Signatures]