Pharmazeutische Fabrik Evers v OHMI - Ozone Laboratories Pharma (HYPOCHOL) (Community trade mark) [2012] EUECJ T-517/10 (12 July 2012)

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(Community trade mark - Opposition proceedings - Application for Community word mark HYPOCHOL - Earlier national figurative mark HITRECHOL - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation No 207/2009)

1 On 27 February 2007, Ozone Laboratories Pharma SA filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark in respect of which registration was sought is the word sign HYPOCHOL.

3 The goods in respect of which registration was applied for are in Class 5 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: 'Cholesterol-lowering pharmaceutical preparations; cholesterol-lowering dietary supplements adapted for medical use'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 44/2007 of 20 August 2007.

5 On 16 November 2007, the applicant, Pharmazeutische Fabrik Evers GmbH & Co. KG, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of that trade mark for the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier figurative mark registered in Germany on 21 January 1991, under No 1171145, for goods in class 5, designated as 'drugs, pharmaceutical and veterinary products, chemical products for use in healthcare; dietetic products for children and sick persons; plasters, bandages; tooth-filling agents and impression masses for use in dentistry; disinfectants; preparations for destroying weeds and exterminating vermin'. That mark is shown below:

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

9 On 6 November 2009 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 1 September 2010 ('the contested decision'), the Fourth Board of Appeal of OHIM dismissed the appeal. First, it held that the relevant territory for the purpose of assessing the likelihood of confusion was Germany and that the relevant public was made up of health professionals and end consumers in general. Second, it held that the goods were identical, that there was a low degree of visual and phonetic similarity between the signs at issue and that, conceptually, those signs did not have a meaning in German. Taking into account the factors just mentioned, the high degree of attention on the part of the relevant public and the average distinctive character of the earlier national figurative mark, the Board of Appeal concluded that there was no likelihood of confusion between the signs at issue.

13 In support of its action, the applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009. In essence, it claims, first, that the signs at issue are visually and phonetically very similar, second, that neither of them has a conceptual meaning and, last, that, in the light of the elements just mentioned, of the average distinctive character of the earlier national figurative mark and of the identical nature of the goods in question, there is a likelihood of confusion between the marks at issue. OHIM disputes the applicant's arguments.

14 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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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, the term '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 Community trade mark.

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 same case-law, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

16 For the purposes of applying 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 cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

17 In the context of the global assessment of the likelihood of confusion, it should be borne in mind that the average consumer's degree of attention is likely to vary according to the category of goods in question (see Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

18 In the present case, it is appropriate, in the first place, to uphold the findings of the Board of Appeal, which are not disputed by the parties, that the relevant territory for the purpose of assessing the likelihood of confusion is Germany and that the goods in question are identical, since the goods covered by the earlier national figurative mark include the goods covered by the mark applied for.

19 Furthermore, as the Board of Appeal correctly found in the contested decision, the relevant public is composed of health professionals and end consumers. However, it should be pointed out that the relevant public is made up of consumers who are liable to use both the goods covered by the earlier mark and those covered by the mark applied for. As a general rule, however, when the goods covered by one of the marks are included in the wider designation of the other mark, the relevant public is defined by reference to the more specific wording (judgment of 30 September 2010 in Case T-270/09 PVS v OHIM - MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28).

20 In the present case, the end consumers of the goods in question are patients suffering from cholesterol-related disorders. As for the health professionals, these are doctors who prescribe pharmaceutical products or cholesterol-lowering dietary supplements adapted for medical use, and professionals, such as pharmacists, who sell the goods in question, whether or not the latter require a doctor's prescription (see, to that effect, judgment of 23 September 2009 in Joined Cases T-493/07, T-26/08 and T-27/08 GlaxoSmithKline and Others v OHIM - Serono Genetics Institute (FAMOXIN), not published in the ECR, paragraph 50).

21 Furthermore, as the Board of Appeal correctly found, the degree of attention of the relevant public is high with regard to the goods in question. That is evidently the case for health professionals, in so far as the goods in question are pharmaceutical preparations or dietary supplements adapted for medical use. The same holds for the end consumers of those goods, since those goods are capable of affecting their state of health (see, to that effect, judgment of 21 October 2008 in Case T-95/07 Aventis Pharma v OHIM - Nycomed (PRAZOL), not published in the ECR, paragraph 29).

22 With regard to the comparison of the signs, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30). Assessment of the 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 at issue 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 Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 41 and the case-law cited).

23 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 (OHIM v Shaker, paragraph 42). This may be the position, inter alia, where that component is liable by itself to dominate the image which the relevant public retains of that mark, 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 Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43).

24 In the contested decision, first, the Board of Appeal found, when examining the word elements of the marks at issue and the figurative elements of the earlier national mark, that there was a low degree of visual similarity between the opposing marks. Further, it noted that the Chinese characters were not pronounced by the relevant public and took the view that the phonetic similarity between the word elements of the marks at issue was low. Finally, in conceptual terms, the Board of Appeal found that the opposing marks, taken as a whole, did not have any meaning in German. According to the Board of Appeal, there is no evidence that German consumers recognise the syllable 'chol' as referring to cholesterol and, even though the ending 'ol' is familiar in the case of pharmaceutical preparations and the element 'hypo' indicates 'something under, something below normal', the word sign HYPOCHOL does not have any clear meaning in German capable of influencing the comparison of the signs.

25 In the present case, the marks to be compared are, first, the Community word mark HYPOCHOL and, second, the earlier national figurative mark HITRECHOL.

26 As regards the earlier mark, this is composed of the word element 'hitrechol', written in capital letters, and figurative elements, namely two Chinese characters. As OHIM submits, the size of those Chinese characters is comparable to that of the letters of the word element 'hitrechol' and their position above that element means that they can be seen clearly. Further, the word element and the figurative elements of the earlier mark are reproduced in bold. Thus, whether or not those figurative elements are perceived as a transliteration of the abovementioned word element, the view must be taken that they are significant elements in the overall impression produced by the earlier national mark and, therefore, as is apparent from the contested decision, they cannot be ignored in the context of an analysis of the comparison of the signs at issue.

27 Furthermore, as is apparent from paragraph 19 above, the relevant public is composed of health professionals and patients suffering from cholesterol-related problems. For that reason, it cannot be ruled out that that relevant public will be capable of perceiving the suffix 'chol' as being a reference to cholesterol, which translates into German as 'Cholesterin'. Such is the case for health professionals, who will obviously be familiar with that medical term, and for patients who suffer from cholesterol-related disorders, who are likely to have become familiar with the element 'chol', which may remind them of the problems afflicting them.

28 First, in respect of the visual comparison, the applicant submits that the relevant public will neither explicitly notice nor remember the figurative elements of the earlier national mark, in the first place, because the relevant public refers more easily to the word element than to the figurative elements of a composite mark and, in the second place, because the German public is not familiar with Chinese characters. Comparing the word elements of the marks at issue, namely the number of letters and the fact that the first and last letters are the same, the applicant takes the view that there is a high degree of visual similarity between the opposing marks. OHIM disputes the applicant's arguments.

29 Concerning the word elements of the marks at issue, is should be noted that they are of comparable length. The mark applied for is composed of eight letters, while the word element of the earlier national mark is composed of nine letters. It should also be noted that the first letter 'h' and the last letters 'chol' are the same.

30 However, the visual impact of the common suffix 'chol' must be qualified in so far as it is descriptive of the goods in question. Further, the word elements at issue differ as regards the letter groups 'ypo' and 'hitre' in the mark applied for and in the earlier national mark respectively. Thus, the letter groups 'hypo' and 'hitre' are clearly distinguishable and cannot go unnoticed in the relevant public's perception. This is particularly so given that those letter groups are placed at the beginning of the marks at issue and therefore receive more of the relevant public's attention than does the common suffix 'chol' (FAMOXIN, paragraph 68). The first part of a mark tends to have a greater visual and phonetic impact than the final part (see, to that effect, Case T-133/05 Meric v OHIM - Arbora & Ausonia (PAM-PIM'S BABY-PROP) [2006] ECR II-2737, paragraph 51, and Case T-472/08 Companhia Muller de Bebidas v OHIM - Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II-3907, paragraph 62).

31 As OHIM correctly observed, this leads to a different visual impression overall, notwithstanding the fact that the word elements at issue have a similar construction. The degree of visual similarity between the word elements thus appears to be average, even low.

32 With regard to the figurative elements of the earlier national mark, the Board of Appeal was correct in finding that it was necessary to take them into account in a visual comparison of the signs. Even if the word elements of a mark are, in principle, more distinctive than the figurative elements inasmuch as the average consumer will more easily refer to the goods in question by quoting the name than by describing the figurative element of the trade mark (Case T-312/03 Wassen International v OHIM - Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II-2897, paragraph 37), the fact none the less remains, in the light of what was stated at paragraph 26 above, that the presence of the Chinese characters in the earlier national mark, which contribute visually to the overall impression made by that mark, weakens yet further the visual similarity of the marks at issue.

33 In addition, contrary to what the Board of Appeal stated, the possibility cannot be discounted that the Chinese characters may have a visual impact on the relevant public in so far as that public will identify the characters and associate them with Chinese medicine, or, at least, with medicine of Asian origin. Far from undermining the grounds of the contested decision, that consideration, on the contrary, reinforces the merits of the Board of Appeal's conclusion that, in the light of the word elements of the marks at issue and of the figurative elements of the earlier national mark, there is, in the present case, a low degree of visual similarity between the opposing marks.

34 Second, as regards phonetic comparison, the applicant is in agreement with the Board of Appeal's assessment that German consumers will not be able to pronounce the Chinese characters of the earlier national mark. The applicant adds that the two word elements 'hitrechol' and 'hypochol' of the opposing marks are phonetically very similar and that the differences relating to the second syllable and the slightly differing pronunciation of the letters 'i' and 'y' cannot outweigh the similarities which exist between the phoneme 'h' and the last syllable 'chol', which are pronounced in the same way. OHIM takes issue with those assertions of the applicant.

35 It should be noted at the outset, as the applicant and OHIM point out, that the Board of Appeal acted correctly in limiting the phonetic comparison of the signs at issue to their word elements.

36 So far as concerns the pronunciation of those word elements, it is true that this coincides in respect of the first letter 'h', the number of syllables, and the stress placed on the last syllable 'chol'. However, decisive weight cannot be attributed to the final element 'chol', inasmuch as this is a descriptive element referring to cholesterol (FAMOXIN, paragraph 69). In addition, it is common ground that the syllables 'po' and 'tre' have no phoneme in common and that the letters 'y' and 'i' are pronounced differently in German. Thus, the first two syllables of those word elements, namely 'hypo' and 'hitre', are pronounced differently and those differences are clearly perceptible, in phonetic terms, by the relevant public. That is particularly so in view of the fact that, in accordance with the case-law cited in paragraph 30 above, the first part of the opposing marks has, phonetically, a greater impact than their common final part 'chol'.

37 It follows that the Board of Appeal acted correctly in finding that there was a low phonetic similarity between the word elements 'hypochol' and 'hitrechol'.

38 Third, as regards the conceptual comparison, the applicant approves the finding of the Board of Appeal that, taken as a whole, the signs at issue do not have any meaning in German. According to OHIM, the Board of Appeal's finding that there is no likelihood of confusion between the signs at issue is further reinforced if account is taken, in the context of the conceptual analysis, of the Chinese characters featuring in the earlier national mark and of the fact that the relevant public could understand the meaning of the mark applied for, HYPOCHOL, as being that the goods covered by that mark are aimed at lowering the level of cholesterol in the blood.

39 It follows from the contested decision that, according to the Board of Appeal, a conceptual comparison of the signs at issue appears impossible because neither of them, taken as a whole, has any meaning in German. However, contrary to the view take by the Board of Appeal, it is possible to carry out a conceptual comparison of the signs at issue.

40 First, as regards the figurative elements of the earlier national mark, it must be noted that the Chinese characters introduce an element of conceptual difference. As also follows from paragraph 33 above, it is not excluded that those Chinese characters will be identified by the relevant public, who will associate them with Chinese medicine, or, at least, with medicine of Asian origin. In those circumstances, even if such elements lack a clear conceptual meaning, they may none the less influence, to some extent, the perception that signs are conceptually similar or different (see, to that effect, judgment of 13 April 2010 in Case T-103/06 Esotrade v OHIM - Segura Sánchez (YoKaNa), not published in the ECR, paragraph 40).

41 Second, it is not appropriate to exclude the conceptual comparison of the word elements of the marks at issue. It is true that, as regards the word element of the earlier national mark, it has no meaning in German which would be understood by the relevant public. Notwithstanding the presence of the suffix 'chol', which may be perceived as a reference to cholesterol, the prefix 'hitre', placed at the beginning of the word element, has absolutely no meaning in German, and the same is true of the term 'hitrechol'.

42 By contrast, in the case of the mark applied for, as the Board of Appeal correctly found, the prefix 'hypo' indicates 'something under, something below normal' and forms part of German terminology in the health sector. However, that prefix appears as a scientific term which is not commonly used in German and, while it may be understood by health professionals, it is not certain that it would be understood by patients suffering from disorders such as those linked to cholesterol. In that regard, contrary to what OHIM claims, the terms 'hypotension' or 'hypothermia' are translated into everyday German as 'niedriger Blutdruck' and 'Unterkühlung' respectively. Thus, while it is possible that a pharmaceutical preparation identified by the sign HYPOCHOL may create the idea, in the mind of health professionals, of a product designed to lower cholesterol in the blood, that is not necessarily the case in regard to patients who suffer from cholesterol-related disorders.

43 Therefore, so far as health professionals are concerned, even if the word elements of the marks at issue coincide in the common descriptive suffix 'chol', it none the less follows from the foregoing that only the word mark applied for has a meaning, whereas the position is different with regard to the word element of the earlier national mark, which has no meaning. From this it necessarily follows that health professionals will perceive the marks at issue as being conceptually different (see, to that effect, judgment of 21 January 2010 in Case T-309/08 G-Star Raw Denim v OHIM - ESGW (G Stor), not published in the ECR, paragraph 33). That conceptual difference is emphasised yet further by the presence of the figurative elements in the earlier national mark.

44 With regard to patients who suffer from cholesterol-related disorders, for whom, even if the common suffix 'chol' appears descriptive, first, the word element 'hitrechol' does not have any meaning in German and, second, the word element 'hypochol' does not have any clear meaning in that language, the view should be taken solely that the presence of the Chinese characters in the earlier national mark introduces an element of conceptual differentiation.

45 The 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 lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II-5409, paragraph 74). A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks at issue and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 45).

46 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 those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, paragraph 35 and the case-law cited).

47 Furthermore, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight, and it is then appropriate to examine the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandro v OHIM - Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 57, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM - Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 49). The extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods covered by the opposing signs are marketed. If the goods covered by the marks at issue are usually sold in self-service stores, where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to that product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49).

48 The applicant submits that, because of the average distinctive character of the earlier mark, the identical nature of the goods in question and the high degree of visual and phonetic similarity between the signs at issue, there is a likelihood of confusion within the terms of Article 8(1)(b) of Regulation No 207/2009. OHIM disputes the applicant's arguments.

49 In the contested decision, the Board of Appeal found that, in the light of the high degree of attention on the part of the relevant public, the normal distinctive character of the earlier national figurative mark, and the low degree of visual and phonetic similarity of the marks at issue, there was no likelihood of confusion, even for identical goods.

50 It should be noted at the outset that the finding of the Board of Appeal that the earlier national figurative mark has a normal distinctive character has not been challenged.

51 Concerning the conditions for the marketing of the goods in question, it is to be assumed that 'cholesterol-lowering pharmaceutical preparations' are prescribed by a doctor, which implies that they are normally ordered orally from a pharmacist instead of being lifted freely from the shelves, or, at least, that the prescription for those goods is presented directly by the consumer to the pharmacist, who is then himself responsible for retrieving them from behind the counter, in the area of the pharmacy not accessible to customers. Such an assumption does not, however, preclude the possibility of the consumer looking at the trade mark on the pharmaceutical preparation at the time of purchase or reading the prescription between the time at which it is written by the doctor and when it is handed to the pharmacist.

52 With regard to 'cholesterol-lowering dietary supplements adapted for medical use', these are goods which can be placed in self-service displays on pharmacy shelves or in other health stores. While those goods may therefore be directly visible and accessible to clients, the consumer is, in most instances, advised and guided by a professional who cites orally the names of the various pharmaceutical preparations.

53 Consequently, in the case of patients who suffer from cholesterol-related disorders, the view should be taken that, even if the goods in question are identical, there is no likelihood of confusion between the opposing marks, regard being had to the high degree of attention of those patients at the time of purchase and to the low degree of phonetic and visual similarity between the goods at issue. For that part of the relevant public, this conclusion is further reinforced by the fact that the Chinese characters featuring in the earlier national mark introduce an element of conceptual differentiation, and by the fact that the earlier national figurative mark has only a normal distinctive character.

54 The conclusion set out in the preceding paragraph also applies with regard to health professionals, all of whom will be highly attentive to the visual, phonetic and conceptual aspects of the opposing marks, whether or not the product bearing the mark requires a doctor's prescription. Even if the goods in question are identical, it must be held that there is no likelihood of confusion between the opposing marks, in view of the low degree of visual and phonetic similarity of those marks, of the conceptual difference between their word elements, which is accentuated further by the presence of the figurative elements in the earlier national mark, and of the normal distinctive character of the earlier national mark.

55 Consequently, the Board of Appeal acted correctly in law in finding that there is no likelihood of confusion between the opposing marks for the purposes of Article 8(1)(b) of Regulation No 207/2009. The applicant's single plea in law must for that reason be rejected as unfounded and, consequently, the action must be dismissed in its entirety.

56 Under Article 87(2) 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 OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Pharmazeutische Fabrik Evers v OHMI - Ozone Laboratories Pharma (HYPOCHOL) (Community trade mark) [2012] EUECJ T-517/10 (12 July 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T51710.html Cite as: [2012] EUECJ T-517/10

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