Asahi Intecc v EUIPO - Celesio (Celeson) (EU trade mark - Judgment) [2018] EUECJ T-36/18 (20 November 2018)

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(EU trade mark — Opposition proceedings — International registration designating the European Union — Word mark Celeson — Earlier international word mark CELESIO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Asahi Intecc Co., Ltd, established in Nagoya (Japan), represented by T. Schmidpeter, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Rajh and D. Walicka, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 November 2017 (Case R 1004/2017-4), relating to opposition proceedings between Celesio and Asahi Intecc,

composed of M. Prek, President, F. Schalin and M. J. Costeira (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 22 January 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 16 April 2015, the applicant, Asahi Intecc Co., Ltd, designated the European Union for international registration No 1254798 in respect of the word mark Celeson.

2 That registration was notified to the European Union Intellectual Property Office (EUIPO) on 9 July 2015, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

3 The goods covered by the European Union trade mark fall within Class 10 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Surgical, medical and dental apparatus and instruments, and their parts and accessories; medical guidewires, and their parts and accessories; IVR (interventional radiology) guidewires; PTCA (percutaneous transluminal coronary angioplasty) guidewires; plastic clad guidewires; medical catheters, and their parts and accessories; PTCA (percutaneous transluminal coronary angioplasty) guiding catheters; PTCA balloon catheters; angiographic catheters; micro catheters; occlusion catheters; ablation catheters; ablation catheters; atherectomy catheters; stents and their parts and accessories’.

4 The application for registration was published in Community Trade Marks Bulletin No 2015/127 of 10 July 2015.

5 On 21 January 2016, Celesio AG filed a notice of opposition pursuant to Article 156 of Regulation No 207/2009, read in conjunction with Article 41 of that regulation (now, respectively, Articles 196 and 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods set out in paragraph 3 above.

6 The opposition was based on the earlier international registration designating the European Union of the word mark CELESIO, registered on 15 December 2009 under No 1080783, covering, inter alia, goods in Class 10 corresponding to the following description: ‘Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs; eyes and teeth’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 14 March 2017, the Opposition Division of EUIPO upheld the opposition for the services in question on the basis of Article 8(1)(b) of Regulation No 207/2009.

9 On 12 May 2017, the applicant filed a notice of appeal at EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10 By decision of 20 November 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it considered that, even taking into account a high level of attentiveness of the relevant public, there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on account, first, of the identity of the goods at issue, second, of the high degree of visual and phonetic similarity between the earlier mark and the mark applied for and, third, of the normal degree of distinctiveness of the earlier mark.

– order EUIPO and Celesio each to bear half of the costs incurred before the Board of Appeal of EUIPO.

13 According to Article 106(2) of the Rules of Procedure of the General Court, a request for a hearing made by a main party must be submitted within three weeks after service on the parties of notification of the close of the written part of the procedure.

14 In the present case, that notification was served by the Court Registry on 18 April 2018.

15 On 9 May 2018, the applicant lodged a document with the Registry by fax, requesting that it be heard at a hearing.

16 The signed original of the request for a hearing was received at the Registry on 24 May 2018.

17 According to Article 73(3) of the Rules of Procedure, the date on which a procedural document is received at the Registry by fax shall be taken into consideration for the purposes of compliance with the procedural time limits, provided that the signed original of the procedural document is lodged at the Registry no later than 10 days thereafter.

18 On 1 June 2018, the Registry informed the applicant that the signed original of the request for a hearing was received by it after expiry of the 10-day time limit specified in Article 73(3) of the Rules of Procedure.

19 By decision of 6 June 2018, the President of the Second Chamber of the Court decided not to take into consideration the applicant’s request for a hearing, which was lodged out of time.

20 By letter lodged at the Registry on 14 June 2018, the applicant invoked an unforeseen circumstance and requested the Court to take into consideration its request for a hearing of 9 May 2018. In particular, the applicant explained, with evidence supporting its claim, that, on 11 May 2018, it entrusted the signed original of its request for a hearing to a leading company in the courier-services sector for delivery to the Court Registry. The applicant cannot, it claims, be held liable for the fact that it took that company thirteen days to deliver the package to the Court, since the applicant acted with the diligence normally required in that respect, and thus had no influence over the late delivery of the package.

21 It should be pointed out, in that respect, that time limits for bringing an action are a matter of public policy and that the strict application of the rules on procedural time limits serves the requirements of legal certainty and the need to avoid discrimination or arbitrary treatment in the administration of justice. No derogation from the procedural time limits may be made save where the circumstances are quite exceptional, in the sense of being unforeseeable or amounting to force majeure (judgment of 8 November 2012, Evropaïki Dynamiki v Commission, C‑469/11 P, EU:C:2012:705, paragraph 50, and order of 12 July 2016, Vichy Catalán v EUIPO, C‑399/15 P, not published, EU:C:2016:546, paragraph 23).

22 The Court of Justice has held that the concept of unforeseeable circumstances contains an objective element relating to abnormal circumstances unconnected with the trader in question and a subjective element involving the obligation, on his part, to guard against the consequences of the abnormal event by taking appropriate steps without making unreasonable sacrifices. In particular, the person concerned must pay close attention to the course of the procedure set in motion and, amongst other things, act diligently in order to comply with the prescribed time limits. Thus, the concept of unforeseen circumstances does not apply to a situation in which, objectively, a diligent and prudent person would have been able to take the necessary steps before the expiry of the period prescribed for instituting proceedings (see order of 12 July 2016, Vichy Catalán v EUIPO, C‑399/15 P, not published, EU:C:2016:546, paragraph 24 and the case-law cited).

23 Moreover, to be classed as an unforeseen circumstance, an event must be inevitable so that it becomes the decisive cause of the failure to comply with the time limit (see, to that effect, order of 30 September 2014, Faktor B. i W. Gęsina v Commission, C‑138/14 P, not published, EU:C:2014:2256, paragraph 20).

24 Finally, it should be pointed out that, in accordance with the second paragraph of Article 45 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court by virtue of the first paragraph of Article 53 of that statute, it is for the party alleging unforeseeable circumstances to prove the existence thereof.

25 In the present case, as regards compliance with the ten-day time limit referred to in Article 73(3) of the Rules of Procedure, it should be pointed out that the applicant allowed the ten-day time limit to elapse between faxing its request for a hearing and the point at which it entrusted the delivery of the original paper version of that request to the courier, although, in accordance with point 80 of the Practice Rules for the implementation of the Rules of Procedure of the General Court (OJ 2015 L 152, p. 1), which relates to the sending of procedural documents and the annexes thereto, ‘the original document bearing the handwritten signature of the representative must be sent without delay, immediately after its dispatch by fax, without any corrections or amendments, even of a minor nature, being made thereto’.

26 It follows that, by failing to send the original paper version of its request for a hearing immediately after sending an electronic copy thereof by fax, the applicant increased the risk of its application reaching the Court late and failed to demonstrate the diligence to be expected of a reasonably prudent applicant in order to comply with the ten-day time limit laid down in Article 73(3) of the Rules of Procedure (see, to that effect, order of 12 July 2016, Vichy Catalán v EUIPO, C‑399/15 P, not published, EU:C:2016:546, paragraph 30).

27 Moreover, it is apparent from the case-law that the slowness alone in the delivery of mail, in the absence of other specific circumstances, such as an administrative breakdown, a natural disaster or a strike, cannot in itself constitute an unforeseeable circumstance or amount to a force majeure beyond the applicant’s control (see, to that effect, order of 30 September 2014, Faktor B. i W. Gęsina v Commission, C‑138/14 P, not published, EU:C:2014:2256, paragraph 23, and judgment of 29 June 2018, hoechstmass Balzer v EUIPO(Shape of a tape measure case), T‑691/17, not published, EU:T:2018:394, paragraph 15 and the case-law cited).

28 The applicant merely stated that it had acted diligently in soliciting the services of a mail courier on 11 May 2018, namely ten days after sending the fax, without identifying any such specific circumstances or taking any other action in that respect, even though it was its responsibility to track carefully the delivery status (see, to that effect, order of 22 January 2014, Faktor, B i W. Gęsina v Commission, T‑468/12, not published, EU:T:2014:46, paragraph 31 and the case-law cited).

29 In the light of the above, it must be found that the applicant has failed to prove, as it is required to do, that the duration of the delivery of the letter was the decisive cause of the failure to comply with the time limit, in the sense of an event that was so inevitable that it was beyond the applicant’s control.

30 The applicant has thus not established the existence of unforeseen circumstances in the case at hand. Consequently, it must be concluded that the applicant did not submit its request for a hearing within the time limit provided for in Article 106(2) of the Rules of Procedure.

31 Moreover, it should be pointed out that, in accordance with Article 106(1) of the Rules of Procedure, a hearing may be arranged of the Court’s own motion. However, given that the Court considers that it has sufficient information from the documents in the file, it has decided not to avail itself of that possibility in the present case.

32 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea is, in essence, composed of five parts, raising objections to the contested decision as regards, in the first and second parts, the comparison of the goods at issue, in the third and fourth parts, the visual and phonetic comparison of the signs at issue and, in the fifth part, the global assessment of the likelihood of confusion.

34 Article 8(1)(b) of Regulation 2017/1001 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 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.

35 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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

36 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easy Group IP Licensing(easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

37 As regards the determination of the relevant public, it is apparent from paragraph 27 of the contested decision that the Board of Appeal considered that, given the highly specialised nature of the goods in Class 10, all of them being medical apparatus and instruments, the relevant public to be taken into consideration are specialists in the medical and chirurgical field with specific professional knowledge in the medical field and whose level of attention is high. Moreover, the Board of Appeal considered, in paragraph 13 of the contested decision, that the relevant territory for the global assessment of the likelihood of confusion is the European Union, including all its Member States.

38 Having regard to the contents of the file, it is appropriate to endorse that definition of the relevant public, which, moreover, is not disputed by the parties.

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

40 Moreover, it is settled case-law that, when the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgments of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR AND FELICIE), T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited, and of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 29 and the case-law cited).

41 In the present case, the Board of Appeal considered, in paragraph 14 of the contested decision, that ‘surgical, medical and dental apparatus and instruments, and their parts and accessories’, covered by the mark applied for, were identical to the goods ‘surgical, medical and dental apparatus and instruments’, covered by the earlier mark. Having regard to the contents of the file, it is appropriate to endorse that assessment, which, moreover, is not disputed by the parties.

42 In paragraph 15 of the contested decision, the Board of Appeal considered that the other goods covered by the mark applied for, namely ‘medical guidewires, and their parts and accessories; IVR (interventional radiology) guidewires; PTCA (percutaneous transluminal coronary angioplasty) guidewires; plastic clad guidewires; medical catheters and their parts and accessories; PTCA (percutaneous transluminal coronary angioplasty) guiding catheters; PTCA balloon catheters; angiographic catheters; micro catheters; occlusion catheters; ablation catheters; ablation catheters; atherectomy catheters; stents and their parts and accessories’ were all medical apparatus and instruments for the catheter treatment of coronary artery diseases and were, therefore, part of the broad category ‘medical apparatus and instruments’ of the earlier mark. It added, in that respect, that the term ‘medical apparatus and instruments’ was clear and precise and that the applicant itself used it in its lists.

43 By the first part of the single plea in law the applicant challenges the assessment made by the Board of Appeal in paragraph 15 of the contested decision and submits that it erred in assuming, in that paragraph, that ‘medical apparatus and instruments’, covered by the earlier mark, were identical to the goods covered by the mark applied for, listed in paragraph 42 above.

44 In particular, referring to the case-law set out in paragraph 39 above, the applicant submits that the mere fact that a general term is used cannot suffice to show that goods are similar. It submits that the goods covered by the mark applied for, listed in paragraph 42 above, are of a highly specific nature, purpose and method of use, since they are indispensable for catheter treatment of coronary artery diseases. Consequently, it claims that those goods must be considered to be not identical to the goods covered by the earlier mark, in particular to the abstract term ‘medical apparatus and instruments’ in Class 10, since that imprecise and wide term does not allow a specific comparison with regard to its purpose and method of use.

46 In that respect, it should first be pointed out that, within the scope of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), the question of how to interpret references to general indications of class headings in accordance with the Nice Agreement gave rise to the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361). In paragraph 56 of that judgment, the Court of Justice held that such general indications could be used to identify the goods and services covered by the trade mark application, provided that such identification is sufficiently clear and precise.

47 In the case at hand, it must be found that, contrary to what the applicant claims, the general indication ‘medical apparatus and instruments’ of the goods in Class 10 covered by the earlier mark is sufficiently clear and precise to determine the scope of the trade mark protection to be afforded.

48 According to the case-law, the scope of protection of a trade mark is not determined by the inclusion of a term or several terms in a taxonomic information structure but by the usual meaning of that term or terms (see, to that effect, judgment of 30 September 2015, Gat Microencapsulation v OHIM — BASF (KARIS), T‑720/13, not published, EU:T:2015:735, paragraph 44).

49 Accordingly, as rightly stated by the Board of Appeal, the term ‘instrument’ used in the general indication ‘medical apparatus and instruments’ is defined by the Collins English Dictionary as being a ‘tool or device that is used to do a particular task’.

50 In that regard, it is apparent from Article 2(2)(a) of Council Directive 93/42/EEC of 14 June 1993 concerning medical devices (OJ 1993 L 169, p. 1), as amended, that a medical device is defined as ‘any instrument, apparatus, appliance, software, material or other article, whether used alone or in combination, together with any accessories, including the software intended by its manufacturer to be used specifically for diagnostic and/or therapeutic purposes and necessary for its proper application, intended by the manufacturer to be used for human beings for the purpose of:

– diagnosis, monitoring, treatment, alleviation of or compensation for an injury or handicap,

– investigation, replacement or modification of the anatomy or of a physiological process,

and which does not achieve its principal intended action in or on the human body by pharmacological, immunological or metabolic means, but which may be assisted in its function by such means’.

51 It follows that, as rightly pointed out by the Board of Appeal, a ‘medical device’ must be defined as any tool or device used to prevent, diagnose or treat a disease or illness. The general indication ‘medical apparatus and instruments’ for goods in Class 10 is, therefore, sufficiently clear and precise to determine the scope of trademark protection afforded by it.

52 In that regard, it should be pointed out that that finding also follows from the ‘Common communication on the common practice relating to the general indications of the Nice classification headings’, adopted on 28 October 2015 by the national intellectual property offices of the European Union and EUIPO in the context of the European Trade mark and Design Network, which provides users and those offices, including EUIPO, with a list of general indications which lack clarity and precision and which, consequently, cannot be accepted without further specification, since the general indication ‘medical apparatus and instruments’ does not feature on that list.

53 Moreover, the general indication ‘medical apparatus and instruments’, which features on the list of goods covered by the earlier mark is all the more sufficiently clear and precise in that, as correctly observed by the Board of Appeal, the applicant itself uses it in its own list of goods covered by its application for registration with EUIPO.

54 It follows from the foregoing that the applicant’s argument that that general indication is vague and imprecise cannot validly succeed.

55 As regards the goods listed in paragraph 42 above in Class 10 and covered by the mark applied for, it should be pointed out that, given both the usual meaning of the term ‘medical instrument’ referred to in paragraph 51 above and the nature, purpose and use of those goods, they must all be regarded as being medical apparatus and instruments for the catheter treatment of coronary artery diseases, as the Board of Appeal rightly pointed out. As the Board of Appeal also rightly pointed out, those goods must, therefore, be regarded as forming part of the broader category of ‘medical apparatus and instruments’.

56 In the light of the case-law cited in paragraph 40 above, pursuant to which the goods at issue are considered to be identical when the goods covered by the mark applied for are included in a more general category of goods covered by the earlier mark, and since the Board of Appeal rightly found, as has just been stated, that the general category of ‘medical apparatus and instruments’ included the goods covered by the mark applied for listed in paragraph 42 above, it was also correct in concluding that ‘medical apparatus and instruments’, covered by the earlier mark, and all the goods listed in paragraph 42 above, covered by the mark applied for, were identical.

57 Consequently, the assessment of the Board of Appeal set out in paragraph 15 of the contested decision, pursuant to which ‘medical apparatus and instruments’, covered by the earlier mark, were identical to the goods covered by the mark applied for, listed in paragraph 42 above, is not erroneous, with the result that the first part of the single plea must be rejected.

58 Moreover, still as regards the comparison of the goods, the Board of Appeal considered in paragraph 16 of the contested decision, that the Opposition Division had rightly concluded that ‘stents and their parts and accessories’, covered by the mark applied for, were identical to the earlier broad category ‘medical apparatus and instruments’. In that regard, the Board of Appeal referred, as has been noted in paragraph 49 above, to the Collins English Dictionary to show that an instrument is a broad term and which is defined as ‘a tool or device that is used to do a particular task’. Accordingly, a medical instrument is a tool or device that is used in the prevention, diagnosis or treatment of illness or disease. It stated, furthermore, that a stent was a short, narrow, metal or plastic tube that is inserted into the lumen of an anatomical vessel, especially to keep a previously blocked passageway open, and that it helped in the treatment or prevention of medical problems related to the flow of fluids through the blood vessels and ducts. It concluded that, by their nature, purpose and method of use, ‘stents and their parts and accessories’, covered by the mark applied for, were identical to the broad category of ‘medical instruments and apparatus’, covered by the earlier mark.

59 By the second part of its single plea, the applicant challenges the assessment made by the Board of Appeal in paragraph 16 of the contested decision and submits that that decision was erroneous in so far as it was found, in that paragraph, that ‘stents and their parts and accessories’ fell within the broad category of ‘medical apparatus and instruments’, and that those goods were thus identical.

60 In particular, the applicant submits that the dictionary definitions, such as those taken from the Collins English Dictionary, to which the Board of Appeal referred to prove that stents were ‘medical instruments’, are inappropriate to define the term ‘stents’ in these proceedings. It submits that the Board of Appeal should have used the classification tool for goods and services in relation to trade marks ‘TMclass’. It can be seen from that tool that, as regards the Nice Classification and, more specifically, Class 10 thereof, ‘stents’ are ‘artificial organs and implants’, which are included in the broad term, ‘prosthetics and artificial implants’, which do not fall under the broad term ‘medical apparatus and instruments’. In its view, the Board of Appeal should thus have taken account of that classification resulting from the ‘TMclass’ tool and have refrained from defining ‘stents’ in another way.

62 In that regard, so far as concerns the applicant’s reference to the classification tool for goods and services ‘TMclass’, it should be noted that, as EUIPO asserts and as indicated moreover in the specifications for that tool, it is not part of the Nice classification system and has no legal effect on trade mark examination or the comparison of goods and services (judgment of 30 September 2015, KARIS, T‑720/13, not published, EU:T:2015:735, paragraph 44). The applicant’s line of argument in relation to that tool can thus not be reasonably upheld.

63 As has been pointed out in paragraph 48 above, the scope of protection of a trade mark is not defined by the position of a term in a taxonomic information structure but by the usual meaning of that term.

64 So far as concerns the term ‘stents’, it is necessary to research the usual meaning of that term in dictionaries, such as the Collins English Dictionary or the Merriam-Webster Dictionary, as the Board of Appeal did. It follows that, as rightly stated by the Board of Appeal, ‘stents’ are defined as short, narrow, metal or plastic tubes that are inserted into the lumen of an anatomical vessel, especially to keep a previously blocked passageway open, and that they help in the treatment or prevention of medical problems related to the flow of fluids through the blood vessels and ducts.

65 Consequently, regard being had both to their usual meaning and their nature, intended purpose and their method of use, ‘stents and their parts and accessories’, covered by the earlier mark, form part of the broader category of ‘medical apparatus and instruments’, covered by the earlier mark, as rightly pointed out by the Board of Appeal. In the light of the case-law cited in paragraph 40 above, the Board of Appeal was also right to conclude that those ‘stents and their parts and accessories’ were covered in an identical manner by the broader category of ‘medical apparatus and instruments’.

66 Consequently, the Board of Appeal’s assessment, set out in paragraph 16 of the contested decision, that ‘medical apparatus and instruments’, covered by the earlier mark, and ‘stents and their parts and accessories’, covered by the mark applied for, were identical is not erroneous, with the result that the second part of the single plea must be rejected.

67 It follows from all of the foregoing considerations regarding the comparison of the goods that the goods at issue are identical and that the Board of Appeal did not err, in paragraphs 14 to 16 of the contested decision, in regarding them as being so.

68 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 88 and the case-law cited). The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

69 The Court has repeatedly held that 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 (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).

70 In that regard, according to the contested decision, the conflicting signs are similar by reason of their visual and phonetic similarity, whereas the conceptual comparison remains neutral since neither of those signs has any meaning for the relevant public.

71 So far as concerns the visual comparison, the Board of Appeal found, in paragraph 20 of the contested decision, that the signs at issue coincided in the sequence of letters ‘c-e-l-e-s-*-o-*’. It stated that the initial part ‘c-e-l-e-s’ was identical, which substantially contributes to the similarity of the signs, since consumers generally pay more attention to the beginning of signs. Moreover, it observed that the sole visual difference between the signs came from the penultimate latter ‘i’ in the earlier mark and the last letter ‘n’ in the contested sign. It concluded that since the signs coincided in six out of seven letters in total, from a visual point of view the signs were similar to a high degree.

72 By the third part of its single plea, the applicant disputes the Board of Appeal’s assessment that the marks at issue are visually similar to a high degree. In its view, the two signs differ significantly in their respective suffixes ‘on’ and ‘io’, which has a strong influence on the visual characteristics of those signs. Moreover, the overall visual impression of a sign can also be characterised from the ending of a sign. Furthermore, the visual presentation of a sign allows a much longer and even repeated perception of a mark, with the result that the relevant public has enough time to notice the strikingly different suffixes. In addition, the applicant accuses the Board of Appeal of having failed to take account of the relatively short length of the signs, even though the length of signs may influence the effect on the differences between them. Those suffixes thus produce a distinctly prominent, deviating overall image.

74 In that regard, according to the case-law recalled in paragraph 68 above, the visual comparison of the signs must be based on the overall impression given by those signs, as the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.

75 In the case at hand, the overall impression is dominated, in each of the signs at issue, by the fact that those signs share the same sequence of letters ‘c-e-l-e-s-*-o-*’, the first five of which are identical and appear in the same order. Moreover, those signs have six of their seven letters in common. Those similarities will be noticed immediately and will easily be retained in the minds of the relevant public.

76 Furthermore, it should be pointed out that the initial part of the two signs at issue coincide in that they are made up of five identical letters of the seven letters in total. According to settled case-law, since consumers generally pay greater attention to the beginning of a mark than to its end, the initial part of a mark, normally has a greater impact, both visually and phonetically, than the final part (see judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 36 and the case-law cited).

77 The case-law cited in paragraph 76 above is all the more applicable to the present case in that the signs at issue are made of purely verbal elements, which are generally read, in respect of the relevant public in the territory of the EU, from left to right. Similarly, the words which make up those signs do not have any conceptual meaning and are also not likely to be broken down into several, constituent elements, such as the initial weak elements, which could mean that even more attention will be placed on the final parts ‘io’ and ‘on’. Moreover, contrary to what the applicant claims, since the two signs at issue are made up of seven letters, they cannot be regarded as being short signs.

78 Furthermore, the significant similarities between the signs at issue cannot be neutralised by the difference referred to by the applicant, namely that those signs diverge by means of their respective suffixes ‘io’ and ‘on’, which do however share the letter ‘o’, with the result that the only visual difference between those signs lies in the penultimate letter ‘i’ of the earlier mark and the last letter ‘n’ of the sign applied for. That difference is of secondary importance and, consequently, is not sufficient, in the context of an overall visual assessment, to outweigh the similarities. The Court further points out that the Board of Appeal also analysed the signs in respect of their differences, carrying out an evaluation against their similarities in order to appropriately conclude that, visually, the signs were highly similar.

79 It follows that, as is apparent from the overall impression produced by the signs at issue, the latter are highly similar overall from a visual perspective.

80 Consequently, the Board of Appeal’s assessment, on the basis of the overall impression produced by the signs at issue, that those signs are highly similar from a visual perspective, is not vitiated by error, with the result that the third part of the single plea must be rejected.

81 As regards the comparison of the signs from a phonetic point of view, the Board of Appeal found, in paragraph 21 of the contested decision, that the pronunciation of the letters ‘c-e-l-e-s-*-o*’ of the signs at issue coincide, regardless of the pronunciation rules within the EU territory. It stated that the suffixes ‘io’ and ‘on’ do not render a significant difference in the sound of the signs, despite the fact that the earlier mark consists of four syllables, compared to three in the sign applied for. Moreover, it observed that the different sounds ‘i’ and ‘n’ are not sufficient to distinguish between the signs at issue. It concluded from this that, taking into account the principle that consumers tend to focus on the beginning of a sign, the signs at issue were highly similar phonetically.

82 By the fourth part of its single plea, the applicant criticises the Board of Appeal for having considered that the signs at issue are phonetically similar to a high degree, without having taken account of their different overall sonority. In the applicant’s view, the difference related to the suffixes ‘son’ and ‘sio’ renders the marks dissimilar from a phonetic perspective. The pronunciation of those suffixes differs considerably, it argues, as that difference brings a change both to the syllabic sequence and the vowel sequence. Moreover, the applicant accuses the Board of Appeal of having failed to take into consideration the accentuation of the syllables of the signs at issue or the relatively short length of the signs. The applicant submits that those suffixes thus produce a different rhythm of speech and a different intonation, thereby creating overall impressions which clearly differ on a phonetic level.

84 In that regard, according to the case-law recalled in paragraph 68 above, the comparison of the signs must be based on the overall impression given by those signs, as the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.

85 In the present case, it should be noted at the outset that the two signs at issue consist exclusively of verbal elements. Moreover, in the case of words devoid of conceptual meaning, as in the case at hand, the relevant consumer is likely to pronounce the words in accordance with the pronunciation rules of his language, in such a way that the two words at issue could have the same rhythm and intonation in common and, consequently, produce a similar overall phonetic impression.

86 Given the characteristics of the signs at issue referred to in paragraph 75 above, in particular the common characteristic of the initial sequence of letters ‘c-e-l-e-s’, the overall phonetic impression is dominated, in each of the signs, by the fact that their pronunciations coincide as regards the sound of the letters ‘c-e-l-e-s’, regardless of the pronunciation rules used by the relevant public within EU territory.

87 Moreover, in the light of those characteristics of the signs at issue and the case-law cited in paragraph 76 above, which is all the more applicable to the present case for the same reasons as those set out in paragraph 77 above, it must be found that those signs are highly similar phonetically.

88 Furthermore, the significant similarities between the signs at issue cannot be neutralised by the difference referred to by the applicant, which is based solely on the difference in the respective suffixes ‘io’ and ‘on’ of those signs. As the Board of Appeal rightly observed, those suffixes do not create a significant difference in the sound resulting from the pronunciation of the signs at issue, in spite of the fact that the earlier mark is made up of four syllables, whereas the sign applied for is made up of three. The different sounds resulting from the pronunciation of the letters ‘n’ and ‘i’ are not sufficient, moreover, to distinguish between the signs at issue. The difference raised by the applicant is thus secondary and, as a result, is not sufficient, in the context of an overall phonetic assessment, to outweigh the similarities. In that regard, the Board of Appeal also analysed the signs in respect of their differences, carrying out an evaluation against their similarities in order to appropriately conclude that the marks were highly similar phonetically.

89 It follows that, as is apparent from the overall impression produced by the signs at issue, those signs have a high degree of overall similarity from a phonetic point of view.

90 Consequently, the Board of Appeal’s assessment, on the basis of the overall impression produced by the signs at issue, that those signs are highly similar phonetically is not vitiated by error, with the result that the fourth part of the single plea must be rejected.

91 As regards the comparison of the signs at issue conceptually, the Board of Appeal considered, in paragraph 22 of the contested decision, that neither of those signs has any meaning for the relevant public. The conceptual comparison remains neutral.

92 Having regard to the contents of the file, it is appropriate to endorse that assessment of the Board of Appeal, which, moreover, is not disputed by the parties.

93 On the basis of all of the findings which it made in respect of the relevant public, the comparison of the goods and the comparison of the signs, the Board of Appeal concluded, in paragraph 29 of the contested decision, that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the marks at issue for the goods covered by them. In particular, it stated that, even taking into account a high level of attentiveness of the relevant public, such a likelihood existed due, first, to the fact that the goods are identical, second, to the high degree of visual and phonetic similarity between the signs and, third, to the normal degree of distinctiveness of the earlier mark.

94 By the fifth part of its single plea, the applicant submits, in essence, that the Board of Appeal wrongly assessed factors which are relevant for the overall assessment of the likelihood of confusion.

95 In particular, the applicant accuses the Board of Appeal of having failed to take account of the fact that the signs at issue are word marks. Consequently, when determining their similarities and dissimilarities, it is more a question of the phonetic than of the visual comparison.

96 Moreover, the applicant points out that, given the high level of attention of the relevant public, the Board of Appeal erroneously assessed the factors relevant for the assessment of the likelihood of confusion. It submits that the visual and phonetic differences of the marks at issue are sufficient for the relevant consumer to be able to distinguish between them, especially taking into account the high degree of awareness and attention of the relevant public, which are business customers with specific professional knowledge and expertise in the medical sector. In the applicant’s view, those consumers consciously analyse the relevant market before buying medical products and focus more on the differences between the marks than on their similarities. Furthermore, the applicant states that, even if average consumers must trust their recollection of two marks when comparing them, this cannot lead to the defect that all similarities are perceived, but the differences are overheard or overlooked at the same time. Therefore, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

98 In that regard, as has been pointed out in paragraph 35 above, 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. According to the same line of case-law, 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 case (see judgment of 30 June 2015, La Rioja Alta v OHIM — ALDI Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 68 and the case-law cited).

99 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 low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

100 For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. 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 (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

101 As regards the applicant’s line of argument that the Board of Appeal failed to take account of the fact that the signs at issue were word marks, with the result that a phonetic comparison is more relevant than a visual comparison, it should be pointed out that, as is apparent from paragraph 19 of the contested decision, the Board of Appeal expressly took account of the fact that the signs at issue were word marks. Moreover, as is apparent from paragraphs 79 and 89 above, the signs at issue are, in any event, similar overall to a high degree both visually and phonetically. Therefore, that line of argument cannot validly succeed.

102 As regards the applicant’s argument that the Board of Appeal failed to take account of the high level of attention of the relevant public in its overall assessment of the likelihood of confusion, it should be pointed out that it is true that the level of attention of the relevant public constitutes a factor to be taken into account in the assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 2017/1001. However, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion and therefore any possibility of applying that provision can, a priori, be ruled out. On the contrary, what is required is an overall assessment of that risk on a case-by-case basis, as is required by the settled case-law cited in paragraph 98 above. In the context of that overall assessment, the level of attention of the relevant public constitutes just one of the factors to be taken into consideration (judgments of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraphs 52 and 53, and of 13 March 2018, Kiosked v EUIPO — VRT (K), T‑824/16, EU:T:2018:133, paragraph 72).

103 In addition, what is important is the level of attention which the relevant public will display when examining the commercial origin of the goods or services at issue. The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them (see judgments of 21 November 2013, ancotel., T‑443/12, not published, EU:T:2013:605, paragraph 54 and the case-law cited, and of 13 March 2018, K, T‑824/16, EU:T:2018:133, paragraph 73 and the case-law cited).

104 In the present case, it is clear from the considerations set out in paragraphs 79 and 89 above that the overall impression produced by the mark applied for, on the one hand, and the earlier mark, on the other, is that of two marks which are highly similar from both a visual and phonetic perspective, and that the conceptual comparison of them remains neutral.

105 It cannot, however, be ruled out, in that regard, that a significant number of members of the relevant public will have only an imperfect recollection of the earlier mark. In those circumstances, it is possible, in the light of the fact that the signs are phonetically and conceptually highly similar, that, faced with the image of the mark applied for, the relevant public will perceive that mark as an updated and modernised version of the earlier mark, rather than as a separate trade mark with a different commercial origin. It follows that, in spite of the high level of attention which will be paid by the relevant public, a likelihood of confusion between the marks at issue cannot be ruled out.

106 In the light of all of those factors in the context of an overall assessment of the likelihood of confusion and since, as is apparent from paragraph 67 above, the goods at issue are identical and the earlier mark has a normal distinctive character, as rightly found by the Board of Appeal in paragraph 28 of the contested decision, it must be concluded that there is a likelihood of confusion between the two marks at issue in the mind of the relevant public, namely specialists in the medical and chirurgical fields who have specific professional knowledge in the medical field, and that that remains the case regardless of the high level of attention that will be paid by them.

107 Consequently, the Board of Appeal was right and did not infringe Article 8(1)(b) of Regulation 2017/1001 in considering in paragraph 29 of the contested decision, in the context of an overall assessment of the likelihood of confusion, that, in spite of the high level of attentiveness of the relevant public, there exists a likelihood of confusion between the marks at issue in the present case. Accordingly, the Board of Appeal’s assessment of the factors relevant for the assessment of the overall assessment of the likelihood of confusion is not vitiated by error, with the result that the fifth part of the single plea must also be rejected.

108 In conclusion, in the light of all of the foregoing considerations, the single plea raised by the applicant in support of its first head of claim must be rejected as unfounded and, consequently, without it being necessary to examine the admissibility of the second head of claim seeking that the Court dismiss the opposition, the action must be dismissed in its entirety.

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

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Asahi Intecc v EUIPO - Celesio (Celeson) (EU trade mark - Judgment) [2018] EUECJ T-36/18 (20 November 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T3618.html Cite as: [2018] EUECJ T-36/18, EU:T:2018:808, ECLI:EU:T:2018:808

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