Bionecs v OHMI - Fidia farmaceutici (BIONECS) (Judgment) [2015] EUECJ T-262/14 (26 November 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark BIONECS — Earlier international word mark BIONECT — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Bionecs GmbH, established in Munich (Germany), represented by M. Knitter, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,

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

Fidia farmaceutici SpA, established in Abano Terme (Italy), represented by R. Kunz-Hallstein, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 6 February 2014 (Case R 1179/2013/1) concerning opposition proceedings between Fidia Farmaceutici SpA and Bionecs GmbH,

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

having regard to the application lodged at the Registry of the General Court on 24 April 2014,

having regard to the response of the intervener lodged at the Registry of the Court on 18 August 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court of 2 May 1991, to give a ruling without an oral procedure,

1 On 16 February 2012, the applicant, Bionecs GmbH, 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 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 are, inter alia, 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 in particular to the following description: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use … ; dietary supplements for humans and animals; plasters, materials for dressings’.

4 On 18 April 2012, the intervener, Fidia farmaceutici SpA, filed a notice of opposition under Article 8(1)(b) of Regulation No 207/2009 against the registration of the mark applied for with respect to the goods referred to in paragraph 3 above.

5 The opposition was based on international registration No 715915 of the word mark BIONECT effective in the Czech Republic, Austria and Poland relating to the goods in Class 5 and corresponding to the following description: ‘Pharmaceutical preparations used in tissular repair’.

6 By decision of 24 April 2013, the Opposition Division upheld the opposition in respect of all the goods referred to in paragraph 3 above. It considered that the relevant public included the general public and medical professionals, so that the level of attention of the relevant public ranged from average to a high level. The goods covered by the signs at issue were identical or similar. Moreover, it considered that the element ‘bio’ had a weak distinctive character and that the signs at issue were visually and phonetically similar, as a result of the common part ‘bionec’. According to that division, part of the relevant public understood the meaning of the element ‘bio’, so that there was a certain degree of conceptual similarity. The only difference relating to the last letters of the signs did not suffice to exclude the existence of a likelihood of confusion.

7 On 24 June 2013, the applicant filed an appeal with OHIM against the decision of the Opposition Division.

8 By decision of 6 February 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It based its decision on the following considerations:

– the relevant public was made up of medical professionals and end consumers and the two groups displayed a high level of attention, given that the goods at issue were capable of affecting health;

– the distinctive character of the element ‘bio’ was below average for the goods at issue;

– as a result of the coincidence of the group of letters ‘bionec’ in the signs at issue, the only difference being the presence of the letter ‘t’ in the earlier mark and that of the letter ‘s’ in the trade mark applied for, those signs had a high degree of visual and phonetic similarity; moreover, a certain degree of conceptual similarity resulted from the common element ‘bio’, which the relevant public understands;

– even if, as a result of the presence of the element ‘bio’, which referred to the goods at issue, the earlier mark could, as a whole, have a less than average distinctive character, there existed a likelihood of confusion, in light of the fact that the signs at issue are almost identical or that the goods referred to were similar.

11 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

12 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 an 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. In addition, under Article 8(2)(a)(iv) of that regulation, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

13 According to established 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 the goods or services in question, and taking account of 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, ECR, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited).

14 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 goods at issue 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 Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and case-law cited).

15 In the present case, the Board of Appeal held that the relevant territory was the Czech Republic, Austria and Poland, which are the Member States in which the earlier international mark had effect. Furthermore, it also held that the relevant public was made up of medical professionals and end consumers. According to the Board, both groups displayed a high level of attention, given that the goods at issue were capable of affecting health.

17 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 assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products (judgments of 21 October 2008 in Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, EU:T:2008:455, paragraph 29, and of 8 July 2009 in Procter & Gamble v OHIM — Laboratorios Alcala Farma (oli), T‑240/08, EU:T:2009:258, paragraph 50). Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (judgments of 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 28, and of 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, ECR, EU:T:2010:520, paragraph 26).

18 Therefore, in the present case the relevant public should 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 17 above, EU:T:2010:520, paragraph 27).

19 Those observations apply also to the ‘dietary supplements for humans and animals’, which strictly speaking are not medicines, but nevertheless constitute goods in the field of health, since in general they are intended to improve health (see paragraphs 26 and 27 below).

20 In the light of the foregoing, it is necessary to uphold the Board of Appeal’s finding that the average consumer shows a heightened level of attention when choosing goods covered by the signs at issue.

21 According to settled case-law, in order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, 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 and services concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

22 In the present case, the Board of Appeal correctly held that the ‘pharmaceutical and veterinary preparations’ include the goods covered by the earlier mark, with the result that they are identical. Likewise, it correctly established that the ‘sanitary preparations for medical purposes’, the ‘plasters’ and the ‘materials for dressings’ were related to health and supplemented the goods covered by earlier mark, so that they were similar or very similar. Those findings are moreover not contested by the applicant.

23 The applicant disputes however that the ‘dietetic food and substances adapted for medical or veterinary use’ and the ‘dietary supplements for humans and animals’, covered by the mark applied for, and the ‘pharmaceutical preparations used in tissular repair’, covered by the earlier mark, are similar.

24 The Board of Appeal held in that regard that the ‘dietetic food and substances adapted for medical or veterinary use’ were foodstuffs adapted for special dietary requirements, to cure diseases or prevent them. The ‘dietary supplements for humans and animals’ were substances prepared for special nutritional requirements with the purpose of treating or preventing a disease. Those goods could be used before using other preparations or together with other preparations. The foodstuff supplements and dietetic supplements could also have a therapeutic effect. Their nature and purpose were similar to those of the ‘pharmaceutical preparations used in tissular repair’ covered by the earlier mark, in so far as they were used to treat or prevent diseases. The end consumers coincided and those goods were fairly often used in combination. Furthermore, those goods shared the same distribution channels, namely pharmacies. Consequently, according to that board, those goods were similar.

25 In the first place, according to the applicant, there is a clear difference in the nature of the goods. Dietetic food for medical use is also used as a supplement to normal food and not necessarily only in cases of illness or disorders, unlike pharmaceutical preparations. Furthermore, the goods covered by the earlier mark are used only for tissular repair, whereas no dietetic supplements are aimed at helping to cure tissue.

26 In that regard, it must be borne in mind that the ‘dietetic food adapted for medical use’ is intended to treat certain health problems, as the detail concerning ‘medical use’ indicates. Moreover, according to the case-law, nutritional supplements are not intended to serve as ordinary food, but are consumed to prevent or cure medical problems in the broadest sense or to balance nutritional deficiencies (judgment of 23 January 2014 in Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, EU:T:2014:25, paragraph 70).

27 It follows that the goods covered by the mark applied for, as well as the ‘pharmaceutical preparations used in tissular repair’, covered by the earlier mark, fall within the field of health, being in general intended to improve health. Moreover, it should also be noted that the ingredients of all those goods are chemical materials and plant extracts.

28 Therefore, the Board of Appeal was right to find that the nature and purpose of the goods covered by the signs at issue are the same.

29 That finding is not compromised by the applicant’s argument that the goods covered by the earlier mark are used only for tissular recovery, whereas no dietary supplements are intended for the treatment of tissue. By that argument, the applicant defines the nature and purpose of the goods excessively narrowly. The similarity of the goods must be assessed from the point of view of the reasonable and circumspect consumer, who is used to the fact that the manufacturers of pharmaceutical preparations generally offer a range of goods, in order to treat several health problems. Therefore, the common purpose of the goods covered by the signs at issue, which are intended to improve health, and their similar ingredients are sufficient for the relevant public to perceive them as having the same nature and purpose.

30 In the second place, the applicant claims that the goods at issue are sold through different distribution outlets. While the pharmaceutical preparations at issue are distributed in pharmacies, the dietetic food adapted for medical use are also sold by general distribution outlets for food, such as supermarkets and grocery stores. Moreover, the sale of those goods is controlled by different authorities and different legal provisions.

31 In that regard, it should be noted at the outset that the applicant does not deny that pharmacies are points of sale for all the goods covered by the signs at issue. It merely adds that the dietetic food adapted for medical use is also sold in supermarkets and grocery stores. Therefore, it is not disputed that the distribution channels are in part the same. Even a partial overlap of the points of sale is a strong indication that the goods are similar, given that there are numerous points of sale — namely, pharmacies — where both the goods covered by the mark applied for and those covered by the earlier mark are sold to the public.

32 On the other hand, the mere fact that the sale of dietary supplements and pharmaceutical preparations are controlled by different authorities and regulated by different legal provisions does not affect the general public’s perception, given that, when choosing goods, that public is only very rarely aware of the identity of the authorities at issue and the applicable legal provisions.

33 Consequently, it is necessary to uphold the finding of the Board of Appeal that the ‘dietetic food and substances adapted for medical or veterinary use’ and the ‘dietary supplements for humans and animals’, covered by the mark applied for, and the ‘pharmaceutical preparations used in tissular repair’, covered by the earlier mark, are similar in the light of the same nature and purpose of those goods and partial identity of their distribution channels, without there being any need to consider whether those goods are complementary.

34 It follows from the foregoing that the Board of Appeal was correct to hold that the goods covered by the signs at issue are identical or similar.

35 In the first place, according to the 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 Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and of 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).

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

37 In the second place, it must be pointed out that the higher or lower level of the distinctive character of the elements common to a mark applied for and an earlier mark is one of the relevant factors in the context of the assessment of the similarity of the signs (see, to that effect, judgments of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle et Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraph 61; of 18 May 2011 in Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), T‑376/09, EU:T:2011:225, paragraph 35, and of 12 July 2012 in Pharmazeutische Fabrik Evers v OHIM — Ozone Laboratories Pharma (HYPOCHOL), T‑517/10, EU:T:2012:372, paragraph 30).

38 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 Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 35, and of 27 February 2008 in Citigroup v OHIM — Link Interchange Network (WORLDLINK), T‑325/04, EU:T:2008:51, paragraph 66).

39 Moreover, it must be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 51, and in RESPICUR, paragraph 14 above, EU:T:2007:46, paragraph 57).

40 In the present case, the applicant claims that the element ‘bio’, which is common to the signs at issue, alludes to life and is often used as a prefix in the names of organic foods. Therefore, it is descriptive of the goods referred to.

41 It should be noted that, with regard to the element ‘bio’, the General Court has previously 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 ratiopharm v OHIM (BioGeneriX), T‑48/07, EU:T:2008:378, paragraph 25).

42 Such a 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, Czech and Polish languages. In the three languages, the prefix ‘bio’ is commonly used to refer to biology, life or living organisms, as the Board of Appeal moreover stated in recital 25 to the contested decision, in the context of the conceptual comparison of the signs.

43 Moreover, it should be noted that the ‘dietetic food and substances adapted for medical or veterinary use’ and the ‘dietary supplements for humans and animals’, covered by the mark applied for, have the same nature and purpose as pharmaceutical products (see paragraph 33 above), so that the common element ‘bio’ refers also to those products. The same applies to the ‘sanitary preparations for medical purposes’, the ‘plasters’ and ‘materials for dressings’ covered by the mark applied for.

44 Consequently, the General Court considers that the element ‘bio’ is descriptive as regards the goods covered by the signs at issue.

45 According to the contested decision, both signs are word marks and consist of seven-letter words. The marks coincide in six out of seven letters, namely ‘b’, ‘i’, ‘o’, ‘n’, ‘e’ and ‘c’, and differ only in their last letters, respectively ‘t’ and ‘s’. It follows that the marks are very similar visually.

46 The applicant claims that the common element ‘bio’ should not be taken into account during the visual comparison, since it is descriptive.

47 In the first place, in the present case, it should be noted that although the element ‘bio’ is descriptive in respect of the goods covered by the marks at issue, the fact remains that, according to the 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. Accordingly, it cannot be ruled out that, by reason 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 concerned in the perception of the relevant public (judgment of 10 July 2012 in Clorox v OHIM — Industrias Alen (CLORALEX), T‑135/11, EU:T:2012:356, paragraph 35). Likewise, despite its weak distinctive character, an element of a trade 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 McNeil v OHIM — Alkalon (NICORONO), T‑580/11, EU:T:2013:301, paragraph 63).

48 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 at issue. That element represents three of the seven letters of the marks at issue. Furthermore, it is situated 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 Celtipharm v OHIM — Alliance Healthcare France (PHARMASTREET), T‑411/12, EU:T:2013:304, paragraph 25 and the case-law cited).

49 In conclusion, even if the relative importance of the element ‘bio’ in the comparison of the signs is considerably reduced, the fact remains that that element must be taken into account during the comparison.

50 In the second place, it should be noted that the signs at issue do not have in common only the element ‘bio’. They have in common also their first six letters, ‘b’, ‘i’, ‘o’, ‘n’, ‘e’ and ‘c’ and they are differentiated only by their last letters. Moreover, concerning the second part of the signs, which is fully distinctive as regards the goods at issue, three out of four letters, ‘n’, ‘e’ and ‘c’, are identical in both signs.

51 While it is true that the last letter of the mark applied for, ‘s’, is different from the last letter of the earlier mark, ‘t’, that difference alone does not counteract the important similarity arising from the fact that the first six letters of the two signs and the length of those signs, are identical (see, to that effect, judgment in NICORONO, paragraph 47 above, EU:T:2013:301, paragraph 67).

52 In the light of those considerations, it is necessary to uphold the Board of Appeal’s finding that there is a high degree of visual similarity between the signs at issue.

53 Concerning the phonetic aspect of the comparison, the Board of Appeal considered that the part which is shared by the signs at issue, ‘bionec’, would be pronounced in the same way by the relevant public. Therefore, the only phonetic difference would be made up of the last letters, respectively ‘t’ and ‘s’. That phonetic difference was not sufficiently important to alter the overall impression of similarity. Therefore, the signs at issue displayed a high degree of phonetic similarity.

54 The applicant claims that the element ‘bio’ should not be taken into account during the comparison. Therefore, the signs at issue are phonetically different.

55 It must be noted that those arguments are identical to those relied upon by the applicant to contest the Board of Appeal’s assessment in the context of the visual comparison.

56 It should be borne in mind that, even if the relative weight of the element ‘bio’ in the phonetic comparison of the signs is considerably reduced, as a result of its descriptive character, the fact remains that its presence must be taken into account during the comparison and that it significantly affects the overall impression produced by those signs (see paragraphs 47 to 49 above).

57 Moreover, the signs at issue do not share only the element ‘bio’. Those signs share also their first six letters, ‘b’, ‘i’, ‘o’, ‘n’, ‘e’ and ‘c’, and only their last letters are different. As the Board of Appeal correctly held, the group of letters ‘bionec’ will be pronounced in the same way in the languages spoken by the relevant public, namely Czech, German and Polish. Concerning the second part of the signs, which is fully distinctive as regards the goods at issue, three out of four letters, ‘n’, ‘e’ and ‘c’, are identical in both signs.

58 In those circumstances, the fact that the last letters of the signs at issue are different cannot counteract the high similarity resulting from the fact that both signs, which are of identical length, share the same first six letters.

59 Consequently, it is necessary to uphold the Board of Appeal’s finding that there is a high degree of phonetic similarity between the signs at issue.

60 As regards the conceptual aspect of the comparison, the Board of Appeal considered that, even if the element ‘bio’ were descriptive of the goods referred to, it created a certain conceptual similarity, since the relevant public understood it in the same way in the context of both signs. Moreover, the Board of Appeal considered that the relevant public would not understand the element ‘nect’ as an abbreviation of the English word ‘connect’, so that that element does not refer to the goods covered by the earlier mark.

61 In the first place, it should be noted that the relevant public interprets the element ‘bio’ of the signs at issue as referring to life, living beings or biology. For the same reasons as those set out in paragraphs 47 to 49 above, that element must be taken into consideration also during the assessment of conceptual similarity.

62 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 applicant claims (see, to that effect, judgments in CLORALEX, paragraph 47 above, EU:T:2012:356, paragraph 41, and in NICORONO, paragraph 47 above, EU:T:2013:301, paragraph 69).

63 In the second place, the applicant claims that the relevant public understands that the earlier mark BIONECT is related to the connection of tissue, since the element ‘nect’ will be understood as an abbreviation of the English word ‘connect’. By contrast, that public does not associate any meaning with the second element ‘necs’ of the trade mark applied for. Therefore, the signs at issue are conceptually different.

64 In that regard, it must be noted that even that part of the relevant public which speaks English fluently will not make an association between the English word ‘connect’ and the element ‘nect’ if the first part of the word is not reproduced. In addition, a large proportion of the relevant public, namely a very significant proportion of Czech and Polish consumers, do not speak English. It follows that the Board of Appeal was correct to find that the relevant public will not attribute any meaning to the element ‘nect’.

65 In the third place, therefore, the General Court considers that the earlier mark BIONECT, as a whole, has no meaning for the relevant public, so that that public perceives it rather as a fanciful sign. The same applies to the mark applied for BIONECS.

66 It follows from the foregoing that the signs at issue have a certain degree of conceptual similarity as a result of the common element ‘bio’.

67 However, that similarity must be considered in the light of the fact that the element ‘bio’ has a weak distinctive character, in so far as it describes certain of the characteristics of the goods covered (see, to that effect, judgment of 23 October 2013 in Bode Chemie v OHIM — Laros (sterilina), T‑114/12, EU:T:2013:551, paragraph 32). Furthermore, the relevant public does not attribute any particular meaning to the signs, taken as a whole. It follows that conceptual similarity plays a limited role in the assessment of the likelihood of confusion.

68 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 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 of 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, ECR, EU:T:2006:397, paragraph 74).

69 According to the contested decision, the signs at issue are visually and phonetically almost identical and conceptually similar. In view of the fact that the goods covered are identical or similar, there is a likelihood of confusion despite the relevant public’s high level of attention, even assuming that the distinctive character of the earlier mark is weak.

70 The applicant considers that the Board of Appeal did not, in its assessment, give sufficient weight to the fact that the earlier mark BIONECT was descriptive with regard to the goods concerned. According to the applicant, the element ‘bio’ refers to life and to biology, while the element ‘nect’ derives from the English word ‘connect’, so that the meaning of the whole sign is ‘connecting life’, which is entirely descriptive of ‘pharmaceutical preparations used in tissular repair’ referred to by the earlier mark.

71 In that regard, it should be noted that the relevant public does not attribute any meaning to the element ‘nect’, or to the earlier mark BIONECT, as a whole, and perceives it rather as a fanciful sign (see paragraph 65 above). Therefore, the earlier mark has a normal level of distinctiveness.

72 It should be noted that the earlier mark has a normal level of distinctiveness, the goods covered by the signs at issue are identical or similar and there is a high degree of visual and phonetic similarity between those signs, as well as a certain conceptual similarity, the weight of which is reduced in the assessment. Those elements suffice in order to establish the existence of a likelihood of confusion, despite the relevant public’s high level of attention.

73 In light of the foregoing considerations, it is necessary to uphold the Board of Appeal’s conclusion as regards the existence of a likelihood of confusion, and to reject the applicant’s single plea.

75 Under Article 134(1) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and the intervener, as applied for by them.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Bionecs v OHMI - Fidia farmaceutici (BIONECS) (Judgment) [2015] EUECJ T-262/14 (26 November 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T26214.html Cite as: [2015] EUECJ T-262/14, ECLI:EU:T:2015:888, EU:T:2015:888

Court of Justice of the European Communities (including Court of First Instance Decisions)