Novartis v OHMI - Dr Organic (BIOCERT) (Judgment) [2014] EUECJ T-605/11 (10 December 2014)

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(Community trade mark — Opposition proceedings — Application for the Community word mark BIOCERT — Earlier national word mark BIOCEF — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Novartis AG, established in Basel (Switzerland), represented by M. Douglas, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 28 September 2011 (Case R 1030/2010-4), concerning opposition proceedings between Novartis AG and Dr Organic Ltd,

composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,

having regard to the application lodged at the Court Registry on 29 November 2011,

having regard to the response of OHIM lodged at the Court Registry on 26 March 2012,

1 On 5 August 2008, Dr Organic Ltd filed an application for registration of a Community trade mark with 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)).

3 The goods in respect of which registration of the mark was sought fall within Class 5 of the Nice Agreement on the international classification of goods and services for the purposes of the registration of marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Dietary substances and preparations; medicinal health care products; food supplements for dietetic use; nutritional supplements for human beings; vitamins; minerals (nutritional supplements); amino acids (nutritional supplements); plants and herbs for medical or veterinary purposes; herbal preparations for medicinal use; animal and plant extracts, including oils, for medical or veterinary purposes; chemical preparations for medical or veterinary use; naturopathic and homeopathic preparations; tonics; mineral food additives; mineral drinks; vitamin drinks; nutrients and nutriments; medical sprays, patches and other topical formulations; medicated skin care preparations; pharmaceutical preparations and substances; anti-rheumatism belts; bandages, plasters, dressings and wraps; massage and body wraps; oxygen baths; mud for baths; medicinal mud; medicinal oils; thermal water; mineral water salts; eye washes; medicated mouthwashes; slimming preparations; antiseptics; disinfectants; detergents for medical purposes; sanitary preparations; liquid food supplements’.

4 On 20 April 2009, the applicant, Novartis AG, filed a notice of opposition to the registration of the mark applied for, pursuant to Article 8(1)(b) of Regulation No 207/2009, in respect of all of the goods covered by the application for registration.

5 The opposition was based on the earlier verbal mark BIOCEF, registered in Austria on 26 June 1991 under No 136273, for goods falling within Class 5 and corresponding to the following description ‘pharmaceutical preparations’.

6 By decision of 7 April 2010, the Opposition Division dismissed the opposition lodged by the applicant in its entirety. It considered that the relevant public would distinguish between the signs at issue in view of the difference between the elements ‘cef’ and ‘cert’.

7 On 7 June 2010, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision.

8 By decision of 28 September 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It based its decision on the following considerations:

– the relevant public is made up of professionals from the medical and pharmaceutical fields and general end consumers in Austria, who demonstrate a heightened degree of attentiveness as regards pharmaceuticals;

– the two marks contain the word ‘bio’, a common abbreviation in German of the word ‘biological’ and thus having a descriptive meaning. Consumers’ attention accordingly focuses on the elements ‘cert’ and ‘cef’. Being a descriptive element, ‘bio’ is insufficient for establishing a conceptual similarity between the marks at issue;

– in view of the average distinctiveness of the BIOCEF mark, the low visual and phonetic similarities between the signs at issue and the heightened degree of attentiveness of the relevant public, there is no likelihood of confusion, even in respect of identical goods.

11 In support of its action, the applicant puts forward two pleas in law. The first plea alleges infringement of Article 76(1) of Regulation No 207/2009. The second plea alleges infringement of Article 8(1)(b) of that regulation.

12 The Court considers that it is appropriate to begin the examination of the action with the second plea.

The second plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009

13 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 must not 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 Community trade mark.

14 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), EU:T:2003:199, paragraphs 30 to 32 and the case-law cited).

15 In the present case, as the Board of Appeal correctly established, without being challenged by the applicant, the goods covered by the marks at issue are identical or similar. The distinctive character of the earlier mark is average.

16 The applicant, however, complains that the Board of Appeal assessed incorrectly the level of attention of the relevant public, the similarity between the signs at issue and the likelihood of confusion.

17 According to case-law, so far as concerns the degree of attentiveness of the relevant public for the purposes of the global assessment of the likelihood of confusion, the average consumer of the relevant goods is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR), EU:T:2007:46, paragraph 42 and the case-law cited).

18 In the present case, the Board of Appeal considered that the relevant territory was that of the Republic of Austria, the State of registration of the earlier mark, and that the relevant public consisted of professionals from the medical and pharmaceutical field and general end consumers. It also found that the level of attention of the average consumer varied depending on the pharmaceutical product involved. However, it found that even in the case of products sold without prescription, the degree of attention was heightened, since the use of those products affected health.

19 The applicant concedes that the pharmaceutical products might, depending on their active agent and dosage, have a considerable impact on the consumer’s state of health. However, it is not true that the consumer always exhibits a high degree of attention. The applicant claims that there are pharmaceutical products covered by the earlier mark, which are sold freely in pharmacies, drugstores or supermarkets. Therefore, the present case also covers pharmaceutical products for minor ailments, such as mild headaches, a runny nose, light sunburn, insect bites or flatulence. In addition, there exist inexpensive pharmaceutical products routinely purchased by the consumer. Lastly, the consumer could also purchase pharmaceuticals via the Internet or by phone, while being distracted by the environment. The applicant therefore claims that the level of attention of the consumer is average.

20 It should be pointed out that, according to case-law, first, medical professionals display a high degree of attentiveness when prescribing medicines and, second, with regard to end consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products (see judgments of 21 October 2008 in T‑95/07 Aventis Pharma v OHIM — Nycomed (PRAZOL), EU:T:2008:455, paragraph 29 and of 8 July 2009 in T‑240/08 Procter & Gamble v OHIM-Laboratorios Alcala Farma (oli), EU:T:2009:258, paragraph 50). Accordingly, medical products, whether or not acquired on prescription, may be regarded as products to which consumers, who are reasonably well-informed and reasonably observant and circumspect, pay a high degree of attention (judgments of 15 December 2009 in T‑412/08 Trubion Pharmaceuticals v OHIM — Merck (TRUBION), EU:T:2009:507, paragraph 28 and of 15 December 2010 in T‑331/09 Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), EU:T:2010:520, paragraph 26).

21 Therefore, in the circumstances, the relevant public should on any view be regarded as likely to display a higher than average degree of attentiveness, even with regard to pharmaceutical products that can be purchased without prescription (see, to that effect, judgment in TOLPOSAN, paragraph 20 above, EU:T:2010:520, paragraph 27).

22 Similarly, the fact that an end consumer could possibly obtain on the Internet a medicinal product sold without prescription, without the advice of a pharmacist or physician, is not such as to lower that consumer’s degree of attentiveness when purchasing such goods (judgment in TOLPOSAN, paragraph 20 above, EU:T:2010:520, paragraph 28).

23 Moreover, it should be recalled that, according to the case-law cited in paragraph 17 above, for the purposes of assessing the level of attention of the relevant public, the perception of the average reasonably observant and circumspect consumer is to be taken into account. Therefore, environmental elements likely to distract the consumer cannot be taken into account in that assessment.

24 In the light of the foregoing, it is appropriate to uphold the Board of Appeal’s finding that the average consumer shows a heightened level of attention when choosing pharmaceutical products.

25 According to case-law, 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, namely, the visual, phonetic and conceptual aspects (judgments of 23 October 2002 in T‑6/01 Matrazen Concord v OHIM — Hukla Germany (MATRAZEN) [2002] EU:T:2002:261, paragraph 30, and of 10 December 2008 in T‑290/07 MIP Metro v OHIM — Metronia (METRONIA), EU:T:2008:562, paragraph 41).

26 Furthermore, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression of the marks, bearing in mind, inter alia, their distinctive and dominant elements (judgments of 12 June 2007 in C‑334/05 P OHIM v Shaker, EU:C:2007:333, paragraph 35, and of 4 March 2009 in T‑168/07 Professional Tennis Registry v OHIM — Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY), EU:T:2009:51, paragraph 28).

27 The Board of Appeal considered that the element ‘bio’ was descriptive of the products concerned by the signs at issue.

28 According to case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006 in T‑153/03 Inex v OHIM — Wiseman (Representation of a cowhide) EU:T:2006:157, paragraph 35, and of 27 February 2008 in T‑325/04 Citigroup v OHIM — Link Interchange Network (WORLDLINK), EU:T:2008:51, paragraph 66).

29 In addition, it should be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 22 June 1999 in C‑342/97 Lloyd Schuhfabrik Meyer, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a verbal sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgments of 6 October 2004 in T‑356/02 Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), EU:T:2004:292, paragraph 51, and RESPICUR, paragraph 17 above, EU:T:2007:46, paragraph 57).

30 With regard to the element ‘bio’, the General Court has already held, in the context of the application of Article 7(1) of Regulation No 207/2009, that that element is descriptive in the pharmaceutical field, confirming OHIM’s analysis that that term indicates or involves ‘life or living organisms’ (see, to that effect, judgment of 16 September 2008 in T‑48/07 ratiopharm v OHIM (BioGeneriX), EU:T:2008:378, paragraph 25).

31 That finding is also applicable to the present case with regard to an assessment made pursuant to Article 8(1)(b) of Regulation No 207/2009 and to the specific context of the German language. According to the German dictionary Duden, the meaning of the prefix ‘bio’ confirms that it is commonly used in German words to denote biology and refers to life or living organisms.

32 Accordingly, the Board of Appeal was right to hold that the element ‘bio’ was descriptive as regards the products at issue.

33 In the present case, the Board of Appeal held that, due to the descriptive meaning of the element ‘bio’, consumers’ attention would focus on the elements ‘cef’ and ‘cert’, in which the combination of the letters ‘c’ and ‘e’ coincide, but which differ in respect of the additional letters ‘r’ and ‘t’ for one, and the additional letter ‘f’ for the other. In their overall impression, the similarity between the signs is therefore low.

34 The applicant argues that the element ‘bio’ cannot be ignored in the analysis of similarity. Thus, since both signs begin with the letter combination ‘b’, ‘i’, ‘o’, ‘c’ and ‘e’, there exists a high degree of visual similarity between them.

35 According to case-law, when assessing the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the mark (judgment in MATRATZEN, paragraph 25 above, EU:T:2002:261, paragraph 35).

36 First, in the present case, it should be noted that although the element ‘bio’ is descriptive in respect of goods covered by the marks at issue, the fact remains that, according to case-law, the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Thus, it cannot be excluded that, because, in particular, of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark involved in the relevant public’s perception (judgment of 10 July 2012 in T‑135/11 Clorox v OHIM — Industrias Alen (CLORALEX), EU:T:2012:356, paragraph 35). Similarly, despite its weak distinctive character, an element of a mark which is descriptive is likely to attract the attention of the relevant public because of its length and position at the beginning of those marks (see, to that effect, judgment of 6 June 2013 in T‑580/11 McNeil v OHIM — Alkalon (NICORONO), EU:T:2013:301, paragraph 63).

37 That is the situation in the present case concerning the common element ‘bio’ which determines, to a significant extent, the overall impression produced by the two signs. That element represents half the letters of the earlier mark and three-sevenths of the letters of the mark applied for. In addition, it is located at the beginning of the two signs, the part which is in principle more likely to catch the public’s attention (see, to that effect, judgment of 6 June 2013 in T‑411/12 Celtipharm v OHIM — Alliance Healthcare France (PHARMASTREET), EU:T:2013:304, paragraph 25 and the case-law cited).

38 Second, it should be pointed out that not only do the first three letters of signs at issue, constituting the element ‘bio’, match but so do their fourth and fifth letters, ‘c’ and ‘e’. Therefore, five of the seven letters of the mark applied for are in exactly the same order as the sequence formed by five of the six letters of the earlier mark.

39 While it is true that the last two letters of the mark applied for, ‘r’ and ‘t’, are different from the last letter of the earlier mark, ‘f’, that difference alone does not counteract the important similarity arising from the fact that the first five letters at the centre of the two signs, which are very similar length, are identical (see, to that effect, judgment in NICORONO, paragraph 36 above, EU:T:2013:301, paragraph 67).

40 Accordingly, the Board of Appeal’s finding that the signs at issue have a low visual similarity must be reversed and it must be held that, on the contrary, those signs have, at the very least, an average degree of visual similarity.

41 As regards the phonetic aspect of the comparison, the Board of Appeal considered that, due to the descriptive nature of the element ‘bio’, consumers will pay more attention to the distinctive elements ‘cert’ and ‘cef’, which differ in that the soft sound produced by the letter ‘f’ of the earlier mark contrasts with the hard sound produced by the ‘r’ and ‘t’ consonants of the mark applied for. Accordingly, the Board of Appeal considers that there is a low degree of phonetic similarity.

42 The applicant disputes that reasoning on the basis of arguments similar to those put forward in relation to the visual comparison of the signs. It argues that the similarity between the signs at issue is high.

43 First, for the same reasons as those set out in paragraphs 36 and 37 above, account must be taken of the element ‘bio’ also when assessing the phonetic similarity.

44 Second, it must be pointed out that that common element is located at the beginning of the two signs at issue, which in principle is more likely to catch the public’s attention (see paragraph 37 above). Next, it should be noted that that public will pronounce, in the same way, the vowel ‘c’, on which, in each of the marks, the syllable following the element ‘bio’ commences. Moreover, the length of the two signs is very similar.

45 It is true that the relevant Austrian public will not pronounce, in the same way, the vowel ‘e’, which is common to the elements ‘cert’ in the mark applied for and ‘cef’ in the earlier mark. The pronunciation of the letter combination ‘e’ and ‘r’ in German, especially in Austria, rather resembles a semi-vowel the phonetic value of which is close to ‘a’ or ‘ea’. In addition, the length of the single vowel present in the elements ‘cert’ and ‘cef’ differs considerably.

46 However, those latter factors do not militate against the conclusion that, phonetically, the signs at issue have an average degree of similarity, contrary to the view of the Board of Appeal, which had concluded that they had a low similarity.

47 As regards the conceptual aspect of the comparison, the Board of Appeal found that the signs coincided with the element ‘bio’, which, however, due to its descriptive character, was not enough to establish a conceptual similarity. Regarding the second elements of the signs, the relevant Austrian public would not be able to identify a meaning for ‘cert’ or ‘cef’. Therefore, the conceptual comparison would remain neutral.

48 In its reply, the applicant also considers that the conceptual comparison is neutral.

49 It should be noted that, for the same reasons as those set out in paragraphs 36 and 37 above, account must be taken, also when assessing conceptual similarity, of the element ‘bio’, which is common to the signs at issue, which brings the notion of ‘biological’ to the relevant public’s mind.

50 Given the absence of other identifiable conceptual content in the marks at issue, the descriptive character of that element does not exclude a conceptual similarity between them, contrary to what the Board of Appeal found (see, to that effect, judgments in CLORALEX, paragraph 36 above, EU:T:2012:356, paragraph 41, and in NICORONO, paragraph 36 above, EU:T:2013:301, paragraph 69).

51 Therefore, it must be held that, contrary to what the Board of Appeal held, the signs at issue have a certain degree of conceptual similarity.

52 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 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 (judgment in T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) EU:T:2006:397, paragraph 74).

53 In the contested decision, the Board of Appeal held that, given the average degree of distinctiveness of the earlier mark, the low similarity between the signs at issue and the heightened level of attention of the relevant public, no likelihood of confusion existed between the signs at issue, even in respect of identical goods.

54 It should be recalled that the Board of Appeal correctly found that the distinctive character of the earlier mark is average. Even if the element ‘bio’ is descriptive in respect of the goods concerned, the element ‘cef’ will not be perceived by the relevant public as an abbreviation for ‘cephalosporins’ (a class of antibiotics) and is therefore not suggestive of the composition or use of those goods. The findings of the Board of Appeal in that respect are also not disputed by the applicant.

55 As is clear from paragraphs 33 to 51 above, there is, between the signs at issue, at the very least, an average degree of visual similarity, an average degree of phonetic similarity and also a certain degree of conceptual similarity. However, the conceptual similarity between the marks at issue results only from their common element ‘bio’ and the same element also plays a role with regard to the visual and phonetic similarities. Therefore, those similarities should be considered in the light of the fact that that element has a weak distinctive character, in so far as it describes certain characteristics of the goods covered (see, to that effect, judgment of 23 October 2013 in T‑114/12 Bode Chemie v OHIM — Laros (sterilina) EU:T:2013:551, paragraph 32).

56 In that regard, first, it should be recalled that the assessment of the similarity between two marks cannot be confined to taking one sole component of a complex mark and comparing it with another mark, but that a comparison must be carried out wherein each of the marks in question is examined as a whole (see order of 30 January 2014 in C‑422/12 P, Industrias Alen v The Clorox Company EU:C:2014:57, paragraph 43 and the case-law cited).

57 It is true that, in certain circumstances, the overall impression conveyed to the relevant public by a complex mark may be dominated by one or more of its components, with the result that where all the other components of the mark are negligible, the assessment of the similarity can be carried out solely on the basis of the dominant element. However, it cannot be deduced from that case-law on exceptional situations that only the distinctive element of a mark composed of a descriptive element and a distinctive element is decisive when the likelihood of confusion is assessed (see order in Industrias Alen v The Clorox Company, paragraph 56 above, EU:C:2014:57, paragraph 44 and the case-law cited).

58 Furthermore, it must be noted that the finding of a likelihood of confusion in the present case would not grant the applicant a monopoly on the element ‘bio’, given that the existence of a likelihood of confusion leads solely to the protection of a certain combination of elements without, however, protecting as such a descriptive element forming part of that combination (see, to that effect, order in Industrias Alen v The Clorox Company, paragraph 56 above, EU:C:2014:57, paragraph 45 and the case-law cited).

59 Second, it should be noted that the visual and phonetic similarities between the marks at issue do not arise only from the presence of the element ‘bio’ in the marks at issue, but also other factors put forward in particular in paragraphs 37 to 39 and 44 above, such as the almost identical length of the signs and the fact that their first five letters match. In addition, the same letters appear in the initial part of each of those marks.

60 In those circumstances, and given the identical or similar nature of the products, the average degree of distinctiveness of the earlier mark as a whole, it is must be held that there is a likelihood of confusion between the marks at issue, even if the public has an heightened level of attention.

61 In light of the foregoing considerations, the second plea must be upheld and the contested decision must be annulled, without it being necessary to examine the first plea.

62 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 OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 September 2011 (Case R 1030/2010-4).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Novartis v OHMI - Dr Organic (BIOCERT) (Judgment) [2014] EUECJ T-605/11 (10 December 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T60511.html Cite as: EU:T:2014:1050, [2014] EUECJ T-605/11, ECLI:EU:T:2014:1050

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