T-109/16

ORDER OF THE GENERAL COURT (Sixth Chamber) 18 October 2016(*) (EU trade mark — Opposition proceedings — Application for EU word mark RESPIMER — Earlier EU word mark RESPIMAT — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Action manifestly lacking any foundation in law) In Case T‑109/16, Laboratoire de la mer, established in Saint-Malo (France), represented by S. Szilvasi, lawyer, applicant, v European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of EUIPO being Boehringer Ingelheim Pharma GmbH & Co. KG, established in Ingelheim (Germany), ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 January 2016 (Case R 3109/2014-5), relating to opposition proceedings between Boehringer Ingelheim Pharma and Laboratoire de la mer, THE GENERAL COURT (Sixth Chamber), composed, at the time of the deliberation, of S. Frimodt Nielsen (Rapporteur), President, A.M. Collins and V. Valančius, Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 18 March 2016, having regard to the response of EUIPO lodged at the Court Registry on 15 June 2016, makes the following Order  Background to the dispute 1        On 1 October 2012, the applicant, Laboratoire de la mer, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the EU trade mark (OJ 2009 L 78, p. 1), claiming priority of the French word mark RESPIMER, registered under number 123 911 714. 2        Registration as a mark was sought for the word sign RESPIMER. 3        The goods in respect of which registration was applied for are in Classes 3, 5 and 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: –        Class 3: ‘Creams for external application, in particular for irritations of the external walls of the nostrils and around the mouth and bronchial tubes (cosmetics, not for medical purposes)’; –        Class 5: ‘Pharmaceutical preparations; Drugs; Pharmaceutical preparations based on marine products, essential oils, plant extracts, and goods of natural or chemical origin; Medicines based on marine products, essential oils, plant extracts, and goods of natural or chemical origin; Pharmaceutical preparations, namely solutions for the hygiene, cleaning and moistening of the nasal passages and sinuses and the prevention of diseases of the nose and sinuses; Pharmaceutical preparations, namely for the moistening and clearance of the bronchial tubes; Pharmaceutical preparations, namely for the regeneration, repair and healing of the respiratory mucosa; Pharmaceutical preparations, namely solutions for the treatment and soothing of symptoms, the soothing of pain, and the drainage, decongestion and disinfection of the upper and lower respiratory tracts, namely the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Medicines, namely solutions for the treatment and soothing of symptoms, the soothing of pain, and the drainage, decongestion and disinfection of the upper and lower respiratory tracts, namely the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Pharmaceutical preparations for the treatment of the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Solutions for calming symptoms in the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Painkiller solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Drainage solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Decongestants for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Bacterial and/or viral disinfectants for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Solutions, emulsions, creams, gels, ointments and micro-gel solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for hygiene, cleaning, moistening, rehydration, protection, regeneration, repair, healing and prevention of ENT diseases, in particular diseases of the upper and lower respiratory tracts, and in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Solutions, emulsions, creams, gels, ointments and micro-gel solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for the treatment and soothing of symptoms in the respiratory system, for the soothing of pain in the respiratory system, for drainage, decongestion, disinfection and regeneration, repair and healing in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Drops; sprays; Jets, misting solutions and aerosol therapy solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for hygiene, cleaning, moistening, rehydration, protection, regeneration, repair, healing and prevention of ENT diseases, in particular diseases of the upper and lower respiratory tracts, and in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Drops; sprays; Jets, misting solutions and aerosol therapy solutions for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for the treatment and soothing of symptoms in the respiratory system, for the soothing of pain in the respiratory system, for drainage, decongestion, disinfection and regeneration, repair and healing in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Powders for dilution, effervescent tablets for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for hygiene, cleaning, moistening, rehydration, protection, regeneration, repair, healing and prevention of ENT diseases, in particular diseases of the upper and lower respiratory tracts, and in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Powders for dilution, effervescent tablets for the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes, for the treatment and soothing of symptoms in the respiratory system, for the soothing of pain in the respiratory system, for drainage, decongestion, disinfection and regeneration, repair and healing in the context of diseases including colds, influenza, rhinitis, in particular allergic rhinitis, hay fever, nasal dryness, sinusitis, rhinosinusitis, rhinopharyngitis, pharyngitis, laryngitis, bronchitis and bronchiolitis, and post-operative care; Isotonic and hypertonic marine serums’; –        Class 10: ‘Medical apparatus and instruments for the moistening, clearance, regeneration, repair and healing of the respiratory mucosa, for the treatment and soothing of symptoms in the respiratory system, for the soothing of pain in the respiratory system, and for drainage, decongestion and disinfection of the upper and lower respiratory tracts, namely the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes; Medical devices for the moistening, clearance, regeneration, repair and healing of the respiratory mucosa, for the treatment and soothing of symptoms in the respiratory system, for the soothing of pain in the respiratory system, and for drainage, decongestion and disinfection of the upper and lower respiratory tracts, namely the nasal passages, the sinuses, the pharynx, the throat and the bronchial tubes’. 4        The EU trade mark application was published in Community Trade Marks Bulletin No 222/2012 of 21 November 2012. 5        On 8 January 2013, the other party to the proceedings before the Board of Appeal of EUIPO, Boehringer Ingelheim Pharma, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for based on the earlier EU word mark RESPIMAT, filed on 11 February 1998, registered on 8 March 1999 under number 746115 and duly renewed until 11 February 2018 in respect of the following goods: -        Class 5: ‘Pharmaceutical preparations’; -        Class 10: ‘Instruments and apparatus for inhaling of pharmaceutical preparations’. 6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009. The opposition was directed against all of the goods covered by the mark applied for and was based on all of the goods covered by the earlier mark. 7        On 6 October 2014, the Opposition Division upheld the opposition and rejected the trade mark application in its entirety. 8        On 5 December 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. 9        By decision of 21 January 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO confirmed the decision of the Opposition Division and dismissed the appeal. In the first place, as regards the use of the earlier mark, the Board of Appeal found that Boehringer Ingelheim Pharma had shown the use of the earlier mark for ‘apparatus for inhaling of pharmaceutical preparations’ in Class 10, but that the documents which it had produced did not show, on the other hand, genuine use of the earlier mark for pharmaceutical products in Class 5. In the second place, as regards the likelihood of confusion, first, the Board of Appeal found that as the earlier mark was an EU trade mark, the relevant territory was the territory of the European Union. Second, as regards the relevant public, the Board of Appeal considered that it was the general public for non-medical creams used for the treatment of the upper and lower respiratory tracts, and doctors and pharmacists, as well as the general public and final consumers for the rest of the goods concerned, a public which it considered displayed a higher than average level of attention taking account of the nature of the goods concerned and their potential effect on health. Third, the Board of Appeal considered that the goods covered by the earlier mark had a medium degree of similarity to the goods covered by the mark applied for in Class 5, a high degree of similarity to the goods covered by the mark applied for in Class 10 and a low degree of similarity to the goods covered by the mark applied for in Class 3. Fourth, as regards the comparison of the signs, the Board of Appeal considered that they were highly similar visually, that they had a high degree of phonetic similarity, that, conceptually, neither of the signs as a whole had any clear meaning and that, even if a part of the public were to perceive a certain conceptual difference between the two marks in dispute, that conceptual difference would not, however, be sufficient to counteract fully the visual and phonetic similarity between them. Fifth, the Board of Appeal considered that the earlier mark, for at least a part of the relevant public, presented a normal degree of distinctiveness. Finally, sixth, as regards the global assessment of the likelihood of confusion, the Board of Appeal concluded that, given that the goods at issue in Classes 3, 5 and 10 were similar, that the marks at issue were highly similar visually and phonetically, that the earlier mark as a whole did not convey a clear meaning in relation to the goods concerned, although the element ‘respi’ may be perceived as a reference to the word ‘respiratory’ by a part of the public in the European Union, that even a weak distinctive character of the earlier mark could not preclude a likelihood of confusion due to the similarities between the signs on the visual and phonetic level, and that the average EU consumer only rarely had the chance to make a direct comparison between the different marks, but had to rely on his or her imperfect recollection of them, it could not be excluded that a part of the relevant public would confuse the sign RESPIMER with the medical apparatus marketed by Boehringer Ingelheim Pharma under the mark RESPIMAT. 10      Furthermore, as regards the applicant’s argument that the opposition — submitted by Boehringer Ingelheim Pharma to the registration of the French mark RESPIMER and also based on the earlier mark — had been rejected by the Institut national de la propriété industrielle (INPI, France), the Board of Appeal, first, reiterated that, according to settled case-law, EUIPO was not bound by the decisions taken by national offices for trademarks and that the registrability of a sign as an EU trade mark was to be assessed only on the basis of Regulation No 207/2009 and, second, considered that, in any event, the decisions were not comparable, the decision of the INPI being limited to the French territory whereas the assessment of the likelihood of confusion made by EUIPO extended to the territory of the whole European Union.  Forms of order sought 11      The applicant claims that the Court should: –        annul the contested decision; –        grant the application for registration of the mark RESPIMER for all of the goods in Classes 3, 5 and 10; –        order Boehringer Ingelheim Pharma to pay the costs, including those relating to the proceedings before EUIPO.  12      EUIPO contends that the Court should: –        dismiss the action; –        order the applicant to pay the costs.  Law 13      Under Article 126 of the Rules of Procedure of the General Court, where it is clear that the General Court has no jurisdiction to hear and determine an action or where the action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. 14      In the present case, the Court considers that it has sufficient information from the documents before it and has decided, pursuant to that provision, to give a decision on the action by reasoned order without taking further steps in the proceedings, despite the applicant’s request for a hearing (see, to that effect, orders of 13 September 2011, ara v OHIM — Allrounder (A), T‑397/10, not published, EU:T:2011:464, paragraph 18, and of 17 July 2012, L’Oréal v OHIM — United Global Media Group (MyBeauty TV), T‑240/11, not published, EU:T:2012:391, paragraph 10). 15      In support of its action, the applicant puts forward two pleas in law, alleging, first, the lack of legal basis of the contested decision, in that the Board of Appeal refused to take into consideration INPI’s decision of 4 April 2013, and, second, infringement of Article 8(1)(b) of Regulation No 207/2009.  The first plea in law, alleging lack of a legal basis of the contested decision 16      The applicant submits, in essence, that the Board of Appeal was wrong not to rely, in assessing Boehringer Ingelheim Pharma’s opposition to the EU trade mark application, on INPI’s decision of 4 April 2013 that had rejected the opposition raised by Boehringer Ingelheim Pharma to the French mark RESPIMER by relying also on the earlier mark RESPIMAT, although those proceedings concerned the same legal persons, the same marks and the same goods. Therefore, according to the applicant, the contested decision has no legal basis. 17      EUIPO disputes the applicant’s arguments. 18      It should be borne in mind that, according to settled case-law, registrations already made in Member States are only factors which may merely be taken into consideration by EUIPO, without being given decisive weight, for the purposes of registering an EU trade mark. No provision of Regulation No 207/2009 requires EUIPO, or on appeal, the General Court, to come to the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 49; order of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 43; and judgment of 17 November 2009, Apollo Group v OHIM (THINKING AHEAD), T‑473/08, not published, EU:T:2009:442, paragraph 43). 19      Consequently, the Board of Appeal was right to consider that it was not obliged to take account of INPI’s decision of 4 April 2013 for the purposes of the proceedings before it. 20      Moreover, it should be noted that the Board of Appeal was right to state that the decisions of INPI and EUIPO were not, in any event, comparable, since the scope of INPI’s decision was limited to French territory, whereas EUIPO’s assessment of the likelihood of confusion extended to the whole EU territory. 21      In so far as the applicant claims that the contested decision failed to state reasons for the grounds which led the Board of Appeal to reject its arguments relating to the existence of INPI’s decision of 4 April 2013, clearly the Board of Appeal’s reasoning follows explicitly from paragraph 68 of the contested decision, both as regards the fact that it did not take into consideration a national authority’s decision for the purposes of the assessment of a likelihood of confusion under Regulation No 207/2009 and as regards the differences between the scope of the respective decisions of INPI and of EUIPO.  22      It follows that the first plea in law must be rejected as manifestly lacking any foundation in law.  The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 23      At the outset, it is appropriate to confirm the Board of Appeal’s assessments as regards, first, the fact that Boehringer Ingelheim Pharma had established the use of the earlier mark for ‘apparatus for inhaling of pharmaceutical preparations’ in Class 10 and, second, the determination of the relevant public — namely the general public in the territory of the whole European Union — and its level of attention, assessments which, moreover, are not called into question by the parties. 24      The applicant raises three arguments in support of its second plea in law relating to the absence of the likelihood of confusion between the mark applied for and the earlier mark. 25      In the first place, the applicant claims that there is no similarity between the goods in Classes 3, 5 and 10 covered by the mark applied for and those covered by the earlier mark in Class 10, namely, ‘apparatus for inhaling of pharmaceutical preparations’. 26      It is however clear that the applicant merely claims that lack of similarity, without supporting its argument. 27      In so far as the applicant seeks to refer to arguments which it had put forward in the context of the proceedings before EUIPO, it should be borne in mind that, according to settled case-law, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under Article 76(d) of the Rules of Procedure, appear in the application itself. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer. It follows that the application, to the extent that it refers to the written submissions to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application (see judgment of 8 July 2010, Engelhorn v OHIM — The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 18 and 19 and the case-law cited). 28      Consequently, the first claim put forward by the applicant in support of its second plea in law must be rejected. 29      In the second place, as regards the comparison of the signs at issue, the applicant claims that the Board of Appeal was right to find that ‘the component “[respi]” w[ould] be perceived by a part of the relevant public as a reference to “respiratory” which in relation to the goods concerned, being intended to treat the respiratory system, is highly allusive’. 30      However, according to the applicant, the attention of the relevant public will focus more on the second part of each of the signs at issue, namely, the elements ‘mer’ and ‘mat’, which are very different visually, phonetically and conceptually and cannot therefore be confused. 31      First, visually, the endings ‘mer’ and ‘mat’ of the signs at issue cannot be confused because of the presence of the very different final groups of letters ‘er’ and ‘at’. 32      Second, the applicant claims that, phonetically, the endings ‘mer’ and ‘mat’ cannot be confused because the signs at issue can be distinguished by their final voicing, in the present case soft for the sign ending with ‘er’ and hard for the sign ending with ‘at’. 33      Finally, third, the applicant submits that, conceptually, the Board of Appeal found, first, that ‘other customers may associate the ending “mer” with the French word “la mer” (the sea, the ocean)’ which is consistent, according to the Board of Appeal, with the business name, Laboratoire de la mer, and with its series of marks, and, second, that ‘the ending “mat” could be perceived as an abbreviation for “material”’ which, in its view, is consistent with the nature of the goods sold by Boehringer Ingelheim Pharma, namely an apparatus for inhaling pharmaceuticals in Class 10. Consequently, the applicant takes the view that there is a very clear difference of intellectual perception between the two marks. According to the applicant, the Board of Appeal was right to consider that ‘a part of the public [could] perceive a certain conceptual difference between the two marks’, which, in its view, strengthens even more so the visual and aural differences between the two signs in dispute. 34      EUIPO disputes the applicant’s arguments. 35      It must be stated that the applicant’s second argument misconstrues the contested decision. 36      In paragraph 61 of the contested decision, the Board of Appeal found as follows: ‘Conceptually, neither of the signs as a whole has any clear meaning. The marks would evoke similar associations from the perspective of those consumers who perceive the common term “[respi]” as an abbreviation for “respiratory” (see, by comparison, judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 59). Other customers may associate the ending “[mer]” with the French word “la mer” (the sea, the ocean). The ending “mat” could be perceived as an abbreviation for “material” or as a play on words with the term “automat”. Finally, some consumers will see both terms as purely fanciful words without any meaning. Even if a part of the public were to perceive a certain conceptual difference between the two marks, this difference would not be, however, sufficient to counteract the high visual and phonetic similarities which have been established (judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 62).’ 37      The Board of Appeal then reproduced the first part of that reasoning at paragraph 63 of the contested decision, concluding that, ‘at least for [a] part of the relevant public, the earlier mark ha[d] a normal degree of distinctiveness’. 38      The Board of Appeal was right to observe that the part of the relevant public liable to perceive the common element ‘respi’ as an abbreviation of the word ‘respiratory’, the element ‘mer’ as evoking ‘the sea, the ocean’ and the element ‘mat’ as referring to the word ‘material’ or to the word ‘automat’ was composed of consumers having knowledge of French or a romance language. 39      The Board of Appeal noted, however, that for another part of the relevant public, in the present case, that having no knowledge of French or a romance language, those words would be perceived as purely fanciful words without any meaning. 40      Therefore, the Board of Appeal was right to consider that, even if a part of the relevant public would perceive a certain conceptual difference between the two marks, that was not, however, sufficient to counteract fully the visual and phonetic similarity which had been established between them (see, to that effect, judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 62). 41      Consequently, the second argument put forward by the applicant in support of its second plea in law must be rejected. 42      Finally, in the third place, the applicant claims, in essence, that the Board of Appeal was required to compare the mark applied for with the earlier mark as actually used, and not as registered. 43      In that regard, it claims that the Board of Appeal correctly stated that ‘the documents submitted by the opponent reveal[ed] that the product sold under the mark(s) “Spiriva Respimat” [was] a combined product consisting of an inhaler called “Respimat” and the pharmaceutical preparation “Spiriva Respimat”’ and that ‘it [had to] be borne in mind that consumers normally attach more importance to the beginnings of words’. The Board of Appeal ought, accordingly, to have taken into consideration the form under which Boehringer Ingelheim Pharma sells a combined product consisting of an inhaler called ‘Respimat’ linked to the pharmaceutical preparation ‘Spiriva Respimat’. 44      The applicant claims that EUIPO must in fact compare the marks as applied for or registered, except where the opponent is required to provide evidence showing that, during the five years preceding the publication date of the EU trade mark application, the earlier EU trade mark has been put to genuine use in the European Union for all the goods it designates. In the present case, the evidence adduced by Boehringer Ingelheim Pharma shows that the earlier trade mark has been put to genuine use for a combined product, consisting of an inhaler called ‘Respimat’ and the pharmaceutical preparation ‘Spiriva Respimat’, which is indeed the combination brought to the attention of the relevant public. 45      That argument cannot succeed, however, since, according to settled case-law, the comparison must be made between the signs as they were registered or as they appear in the trade mark application, whether used alone or in combination with other marks or indications (see, to that effect, judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraphs 65 and 66). 46      The third argument advanced by the applicant in support of its second plea in law must therefore be rejected, and the applicant’s concluding arguments as well that the global assessment of the likelihood of confusion ought to have led the Board of Appeal to find that such a likelihood did not exist. 47      It follows that the second plea in law must be rejected as manifestly lacking any foundation in law. 48      In the light of all the foregoing considerations, the action must be dismissed in its entirety, without any need to rule on the admissibility of the second and third heads of claim submitted by the applicant.  Costs 49      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 50      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.  On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1.      Dismisses the action. 2.      Orders Laboratoire de la mer to pay the costs. Luxembourg, 18 October 2016. E. Coulon        S. Frimodt Nielsen Registrar        President ** Language of the case: English.