UGA Nutraceuticals v EUIPO - BASF (OMEGOR) (EU trade mark - Judgment) [2023] EUECJ T-495/22 (28 June 2023)

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(EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark OMEGOR – Earlier EU figurative mark OMACOR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

UGA Nutraceuticals Srl, established in Gubbio (Italy), represented by M. Riva, J. Graffer and A. Ottolini, lawyers,

European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and T. Frydendahl, acting as Agents,

composed of D. Spielmann, President, V. Valančius (Rapporteur) and I. Gâlea, Judges,

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 By its action under Article 263 TFEU, the applicant, UGA Nutraceuticals Srl, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 June 2022 (Case R 1168/2021-4) (‘the contested decision’).

2 On 22 February 2017, the applicant obtained international registration number 1 409 659 designating the European Union from the International Bureau of the World Intellectual Property Organisation (WIPO). The mark which was the subject of that international registration designating the European Union is the word sign OMEGOR.

3 The goods in respect of which registration was sought are 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 to the following description: ‘Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; nutritional supplements; albumin dietary supplements; alginate dietary supplements; casein dietary supplements; dietary supplements for animals; enzyme dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; glucose dietary supplements; lecithin dietary supplements; linseed dietary supplements; linseed oil dietary supplements; mineral food supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; protein supplements for animals; royal jelly dietary supplements; wheat germ dietary supplements; yeast dietary supplements; dietary fiber; dietary fibre; food for babies; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; starch for dietetic or pharmaceutical purposes; by-products of the processing of cereals for dietetic or medical purposes; dietetic substances adapted for medical use; infant formula; powdered milk for babies; candy, medicated; dressings, medical; amino acids for medical purposes; chewing gum for medical purposes; drugs for medical purposes; gum for medical purposes; pearl powder for medical purposes; pomades for medical purposes; malted milk beverages for medical purposes; pharmaceutical preparations; veterinary preparations; vitamin preparations; preparations of trace elements for human and animal use’.

4 On 26 October 2018, the other party to the proceedings before EUIPO, BASF AS, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the EU figurative mark reproduced below, which was registered on 2 March 2005 under the number 1 414 531 and covers ‘pharmaceutical products in the form of Omega-3 fatty acids’ in Class 5:

– international registration number 934 400 designating the European Union, registered on 27 June 2007 relating to the sign OMACOR and designating goods in Class 5, corresponding to the following description: ‘pharmaceutical preparations; dietetic substances adapted for medical use; food supplements; vitamins’;

– the German word mark OMACOR, registered on 5 August 1998 under the number 2 105 074 and designating goods in Class 5, corresponding to the following description: ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of cardiovascular complaints, diabetes, IgA nephropathy, hyperlipidemia and pancreatitis’.

6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of 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).

7 Following a request by the applicant, EUIPO invited the other party to the proceedings before EUIPO to adduce proof of genuine use of the earlier marks relied on in support of the opposition. That party complied with that request within the period prescribed.

8 On 15 June 2021, the Opposition Division upheld the opposition for all the goods covered by the mark applied for, referred to in paragraph 3 above, with the exception of ‘fungicides’, ‘herbicides’, ‘plasters, materials for dressings’, ‘dressings, medical’, ‘disinfectants’, ‘material for stopping teeth, dental wax’ and ‘preparations for destroying vermin’.

9 On 2 July 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had partially upheld the opposition.

10 By the contested decision, the Board of Appeal dismissed the appeal. First of all, the Board of Appeal stated that it assessed the opposition in relation to the earlier EU figurative mark referred to in paragraph 5 above. It noted that the relevant public was composed of the public at large and customers with specific professional knowledge or expertise whose level of attention varied from above average to high. It also found that since the earlier mark was an EU trade mark, the relevant territory was that of the European Union. In addition, it took the view that the goods in question were identical or similar to varying degrees. As regards the comparison of the signs at issue, the Board of Appeal noted that the word element ‘omacor’ of the earlier figurative mark was the dominant element and that the figurative element will be perceived as mainly decorative. The Board of Appeal also found that the signs at issue displayed an average degree of visual and phonetic similarity and that, without meaning, the conceptual comparison between the signs at issue was not possible. Consequently, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public, within the meaning of Article 8(1)(b) of Regulation 2017/1001. It also stated that, since the opposition was partially successful on the basis of the earlier EU figurative mark, it was not necessary to examine the opposition on the basis of the other earlier marks.

– order the applicant to pay the costs incurred by EUIPO in the event of the parties being summoned to attend an oral hearing.

13 As a preliminary point, it should be made clear that, in accordance with Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989, the date of obtaining an international registration designating the European Union corresponds to the date of the filing of the application, to the office dealing with the request, for registration of the mark for which protection is sought throughout the territory of the parties to the Madrid Agreement.

14 In view of the date on which the application for international registration designating the European Union was filed, namely 22 February 2017, which is decisive for the purpose of identifying the applicable substantive law (see, to that effect, judgments of 30 June 2021, Zoom v EUIPO – Facetec (ZOOM), T‑204/20, not published, EU:T:2021:391, paragraph 17 and the case-law cited, and of 8 September 2021, SBG v EUIPO – VF International (GEØGRAPHICAL NØRWAY), T‑458/20, not published, EU:T:2021:543, paragraph 13 and the case-law cited), the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

15 Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

16 Accordingly, in the present case, as regards the substantive rules, the references made to Article 8(1)(b) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to Article 8(1)(b) of Regulation No 207/2009, the wording of which is identical.

The claim to have the mark applied for allowed to proceed to registration

17 The applicant’s head of claim that the Court allow the application for registration in order that the mark be registered may be understood as a request that the Court alter the contested decision within the meaning of Article 72(3) of Regulation 2017/1001, by adopting the decision which the Board of Appeal ought to have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited).

18 It follows that the applicant’s second head of claim must be rejected on the grounds of lack of jurisdiction.

19 The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

20 In support of its single plea, the applicant claims, in essence, that the Board of Appeal made errors in the comparison of the goods covered by the signs at issue, in the assessment of the visual, phonetic and conceptual similarity of the signs at issue and in the assessment of the likelihood of confusion.

22 As a preliminary point, it should be noted that, under Article 151(1) of Regulation No 207/2009, an international registration designating the European Union is, from the date of its registration pursuant to Article 3(4) of the Protocol relating to the Madrid Agreement, to have the same effect as an application for an EU trade mark. Furthermore, Article 156(1) of that regulation provides that an international registration designating the European Union is to be subject to opposition in the same way as published EU trade mark applications.

23 Under Article 8(1)(b) of Regulation No 207/2009, as amended, 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.

24 According to settled case-law, the risk that the public may 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).

25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

26 In the present case, it must be pointed out that the applicant does not dispute the Board of Appeal’s decision to take into account only the earlier EU figurative mark No 1 414 531 in its assessment of the opposition. Consequently, the Court’s examination will relate only to that earlier EU figurative mark, on which the applicant relied in support of the present action.

27 In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is 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, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

28 In the present case, the Board of Appeal endorsed the finding of the Opposition Division that, first, the relevant public was composed of both the public at large and customers with specific professional knowledge or expertise, such as medical doctors, pharmacists and nutritionists, and secondly, the level of attention of that public varied from above average to high. It also noted, in essence, that, since the earlier figurative mark was an EU trade mark, the relevant territory for the purposes of the assessment of the likelihood of confusion was that of the European Union.

29 The applicant does not dispute those assessments of the Board of Appeal. However, it argues that, as regards pharmaceutical preparations, the level of attention of the relevant public is high, in the case of both the public at large and healthcare professionals.

30 That argument cannot be interpreted as disputing the assessments of the Board of Appeal with regard to the relevant public and its level of attention since both a ‘higher-than-average level of attention’ and a ‘high level of attention’ indicate a heightened level of attentiveness on the part of the relevant public (see judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 27 and the case-law cited).

31 It is apparent from the case-law that, in relation to health-related products, the relevant public is likely to display a high or higher-than-average degree of attention, which means, in essence, that consumers are less likely to confuse different versions of those products (see judgments of 10 December 2014, Novartis v OHIM – Dr Organic (BIOCERT), T‑605/11, not published, EU:T:2014:1050, paragraphs 20 and 21 and the case-law cited; of 10 February 2015, Boehringer Ingelheim International v OHIM – Lehning entreprise (ANGIPAX), T‑368/13, not published, EU:T:2015:81, paragraph 45 and the case-law cited; and of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 26 and the case-law cited).

32 Accordingly, it is necessary to uphold the Board of Appeal’s assessment that the relevant public consists of the public at large and customers with specific professional knowledge or expertise, whose level of attention is high or above average.

33 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, 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 concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

34 It should be noted that the applicant does not dispute the Board of Appeal’s assessments that the goods covered by the earlier mark, namely the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ in Class 5, in respect of which genuine use has been proved, may also be regarded as pharmaceuticals and other preparations for medical purposes.

35 On the other hand, the applicant disputes the Board of Appeal’s assessment that the goods covered by the earlier mark and those covered by the mark applied for in Class 5 were identical or similar to varying degrees.

37 The applicant submits that, in many countries the advertising of pharmaceutical products, which are covered by the earlier mark, is strictly regulated and must generally be pre-approved by the competent authorities.

38 However, the goods covered by the mark applied for, namely the ‘vitamin preparations’, the ‘dietary supplements’, the ‘dietetic substances’, the ‘nutritional supplements’, the ‘dietetic foods and beverages adapted for medical purposes’, the ‘sanitary preparations for medical purposes’ and the ‘food for babies’ do not require any authorisation to be advertised.

39 Consequently, it must be found, as the Board of Appeal did, that the mere fact that the sale of the goods covered by the earlier mark and that of the goods covered by the mark applied for may be regulated by different legal provisions does not affect the relevant public’s perception, given that, when choosing goods, that public is only very rarely aware of the applicable legal provisions (see, to that effect, judgment of 26 November 2015, Bionecs v OHIM – Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 32).

40 The Board of Appeal found, in paragraph 129 of the contested decision, that the goods in question were identical, to the extent that the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ in Class 5 covered by the earlier mark were included in the broader category of ‘pharmaceuticals, medical and veterinary preparations’, ‘drugs for medical purposes’, ‘pharmaceutical preparations’ and ‘veterinary preparations’, covered by the mark applied for.

41 The applicant claims that, contrary to the finding of the Board of Appeal, the goods covered by the marks at issue could not be regarded as identical, since their intended purpose was not the same. In that respect, it maintains that the goods covered by the earlier mark are highly specific and are exclusively aimed at human beings, whereas the goods covered by the mark applied for are exclusively intended for animal use. Moreover, the applicant argues that the goods covered by the mark applied for target a public generally composed of animal and pet owners and that they use different distribution channels.

43 From the outset, it should be borne in mind that the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application (see judgment 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).

44 In the present case, the applicant does not dispute that the goods designated by the mark applied for may comprise or include the goods covered by the earlier mark.

45 In addition, as is observed by EUIPO, it follows from the case-law that the category of pharmaceutical preparations is a broad and generic category which includes both pharmaceutical preparations for human use and those for veterinary use (see judgment of 15 March 2012, Cadila Healthcare v OHIM – Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 42 and the case-law cited).

46 Thus, the fact that the goods covered by the mark applied for are, according to the applicant, exclusively intended for animal use, is not capable of calling into question the Board of Appeal’s finding that the goods covered by the earlier mark were included in the broader category of ‘pharmaceuticals’, ‘veterinary preparations’, ‘dietetic food and substances adapted for veterinary use’ and ‘dietary supplements for animals’.

47 It must be concluded that the Board of Appeal did not err in its assessment in finding that the goods in question were identical.

48 In paragraph 137 of the contested decision, the Board of Appeal observed that the goods covered by the earlier mark had a specific purpose, namely that of preventing or curing cardiovascular diseases and reducing lipids. It also found that Omega-3 fatty acids were present both in pharmaceutical preparations and vitamin preparations. Therefore, the Board of Appeal found that the goods in question coincided in their purpose, namely, health maintenance and restoration of patients. The Board of Appeal also noted that those goods could originate from the same manufacturers, share the same distribution channels, such as pharmacies, the same end users and that they were complementary. The goods are therefore similar.

49 The applicant argues that there is no similarity between the goods covered by the marks at issue. In particular, it submits that the goods covered by the earlier mark have a very specific nature and purpose, namely the treatment of post myocardial infarction and hypertriglyceridaemia. Vitamin preparations are intended to supplement the diet in order to improve health and energy of the human body. According to the applicant, the intended purpose, manufacturers and relevant publics of the goods covered by the marks at issue are therefore dissimilar. The applicant also claims that the goods in question are, moreover, neither in competition nor complementary.

51 In the present case, it must be held, as the Board of Appeal found, that the goods covered by the marks at issue have the same intended purpose, namely the prevention or the treatment of cardiovascular disease problems. Furthermore, they are aimed at the same end users, may originate from the same manufacturers and use the same distribution channels, generally pharmacies. In addition, the goods in question are complementary inasmuch as they may be used in combination.

52 It should also be noted that the treatment of human health problems has been regarded as a common purpose or intended use which can validly be taken into account for the similarity of goods in Class 5 (see, to that effect, judgments of 17 October 2006, Armour Pharmaceutical v OHIM-Teva Pharmaceutical Industries (GALZIN), T‑483/04, EU:T:2006:323, paragraph 70, and of 2 December 2014, Boehringer Ingelheim Pharma v OHIM – Nepentes Pharma (Momarid), T‑75/13, not published, EU:T:2014:1017, paragraphs 58 and 59).

53 In the present case, although the goods covered by the earlier mark have a more specific purpose, the view must nevertheless be taken that the similarities between the goods covered by the marks at issue outweigh the differences.

54 Therefore, the Board of Appeal’s finding in the contested decision that the goods concerned in Class 5 covered by the mark applied for and the goods in the same class covered by the earlier mark were, in essence, very similar must be upheld.

– Dietary and dietetic supplements, nutritional supplements, dietetic food and beverages

55 In the present case, in paragraph 141 of the contested decision, the Board of Appeal made clear that the ‘dietary supplements’, the ‘dietetic substances adapted for medical use’, the ‘nutritional supplements’ and the ‘dietetic foods and beverages adapted for medical purposes’ in Class 5 covered by the mark applied for could also be qualified as pharmaceuticals and ‘other preparations for medical purposes’, since they were included in Class 5. Moreover, it observed that the goods covered by the marks at issue coincided in their nature, inasmuch as they were intended both for animal and human use. Furthermore, it found that, depending on the consumer’s medical condition, the goods in question could be interchangeable or used in combination and are aimed at the same public. In addition, the two types of goods use the same distribution channels, mainly pharmacies, and could be produced by the same manufacturers.

56 The applicant disputes the assessment of the Board of Appeal. In particular, it submits that the goods covered by the earlier mark are very specific preparations which must be prescribed by a professional and which are aimed at users with critical clinical conditions. According to the applicant, there is no risk that a consumer who intends to purchase the goods covered by the mark applied for would receive the earlier goods, since the availability of those goods would be filtered by a professional. The applicant claims that the relevant public, the manufacturers of those goods, the purpose and the method of use of those goods is therefore dissimilar and the goods in question are neither in competition nor complementary.

58 As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the goods covered by the mark applied for may also be qualified as pharmaceuticals and other preparations for medical purposes.

59 In the present case, it should be noted that it is not disputed by the parties that the distribution channels, generally pharmacies, are in part the same. Even a partial overlap of the points of sale is likely to be an indication of similarity between the goods concerned, given that there are numerous points of sale, namely pharmacies, where the goods covered by the mark applied for and those covered by the earlier mark are sold (see, to that effect, judgment of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraph 31).

60 In addition, as regards the applicant’s claim that, first, the provision of the goods covered by the mark applied for is not subject to a medical prescription and, secondly, the goods covered by the mark applied for, unlike the goods covered by the earlier mark, may be advertised, it should be pointed out that, for the purposes of assessing the existence of a likelihood of confusion, solely the goods covered by the marks and not the goods actually marketed under those marks must be taken into account. In that respect, the applicant’s argument is irrelevant in so far as the list of goods covered by the marks at issue does not contain any reference as to the way in which those goods are to be marketed.

61 Consequently, it is necessary to uphold the Board of Appeal’s finding that the ‘dietary supplements’, the ‘dietetic substances adapted for medical use’, the ‘nutritional supplements’ and the ‘dietetic foods and beverages adapted for medical purposes’ in Class 5 covered by the mark applied for are, at least, similar to an average degree to the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ in the same class covered by the earlier mark.

62 In the present case, in paragraphs 150 and 152 of the contested decision, the Board of Appeal found that the ‘food for babies’, the ‘infant formula’, the ‘powdered milk for babies’ and the ‘sanitary preparations for medical use’ in Class 5 covered by the mark applied for were similar to an average agree to the pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia in the same class covered by the earlier mark.

63 The applicant disputes the Board of Appeal’s assessments and submits that those goods are dissimilar.

65 In the first place, as regards the comparison of the ‘food for babies’, the ‘infant formula’ and the ‘powdered milk for babies’ covered by the mark applied for with the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ covered by the earlier mark, the applicant does not dispute the Board of Appeal’s assessment that the goods covered by the mark applied for may also be regarded as goods for medical purposes.

66 Furthermore, as the Board of Appeal correctly noted in paragraph 150 of the contested decision, it follows from the case-law that some food for babies may be complementary to medicines which are administered to them, in the sense that one is indispensable or important for the use of the other (judgment of 13 May 2015, Ferring v OHIM – Kora (Koragel), T‑169/14, not published, EU:T:2015:280, paragraph 56).

67 Consequently, the applicant’s arguments regarding the dissimilar nature of the goods referred to in paragraph 62 above must be disregarded.

68 In the second place, as regards the comparison between the ‘sanitary preparations for medical purposes’ covered by the mark applied for and the ‘pharmaceutical products in the form of Omega-3 fatty acids for the treatment of post myocardial infarction and hypertriglyceridaemia’ covered by the earlier mark, it is appropriate to note the following.

69 As a preliminary point, it should be observed that the applicant does not dispute the Board of Appeal’s finding that the ‘sanitary preparations for medical purposes’ in Class 5 covered by the mark applied include, in particular, sanitary preparations for medical purposes and for personal hygiene, but do not include sanitary preparations for personal hygiene which are toiletries in Class 3.

70 Nor does the applicant dispute the finding that the sanitary preparations and the goods covered by the earlier mark are regarded as similar, in so far as they have the same nature, the same intended purpose, namely that of being used in medical treatment or a surgical operation, they are aimed at the same public and they may be manufactured by the same producers and are complementary.

71 In those circumstances, the Board of Appeal’s analysis in the contested decision must be upheld inasmuch as it found that the goods in question were similar to an average degree.

72 Lastly, as regards the applicant’s argument concerning the alleged deviation from EUIPO’s previous decisions, it should be borne in mind that the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice (judgment of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53).

73 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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).

74 As a preliminary point, it must be noted that the earlier figurative mark is composed of the word ‘omacor’ written in black and white, followed by a figurative device, which is placed in a square, in the form of a circle resembling the first letter ‘o’ of the word element. As regards the word mark applied for, it is composed of the word ‘omegor’ in standard black capital letters.

75 In the present case, the Board of Appeal observed, in paragraph 159 of the contested decision, that the word element ‘omacor’ was the most distinctive and dominant element of the earlier mark, whereas the figurative element played merely a secondary role. Moreover, it found that the word elements of the signs at issue, namely ‘omegor’ and ‘omacor’, had no meaning for the relevant public and had a normal degree of distinctiveness. It should also be noted that, in paragraph 161 of the contested decision, the Board of Appeal found that those signs would not be broken down into several elements.

76 Those findings of the Board of Appeal are not disputed by the applicant. Furthermore, it must be noted that the figurative element of the earlier figurative mark in the form of a circle resembling the letter ‘o’ is, as the Board of Appeal correctly observed, a mainly decorative element, even though it is not negligible in the overall impression produced by that sign.

77 In that respect, it should be recalled, as EUIPO did, that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).

78 As a result, the Board of Appeal did not err in taking the view that the word element ‘omacor’ was the dominant and distinctive element of the earlier mark for the purposes of the comparison of the signs.

79 The Board of Appeal found, in paragraph 163 of the contested decision, that the signs at issue displayed an average degree of visual similarity. According to the Board of Appeal, the signs at issue shared the sequence of letters ‘om’ and ‘or’ of their word elements and differed in the sequence of letters composed of their third and fourth letters, namely ‘ac’ and ‘eg’, respectively, as well as in their stylisation and the figurative element of the earlier mark. In addition, it took the view that the figurative element of the earlier mark played a secondary role in the overall impression produced by the earlier mark.

80 The applicant claims that the earlier mark is a figurative sign composed of one word, in standard characters and a graphic composition comprising a circular shape inscribed into a square, whereas the mark applied for is a word sign composed of one word. The applicant submits that the signs at issue differ in their sequences of central letters ‘ac’ and ‘eg’ of their word elements and that the similarity between the signs at issue lies solely in the sequence of letters ‘om’ and ‘or’ at the beginning and at the end of those words. The applicant claims that, consequently, the marks are visually dissimilar.

82 It must be held that, as the applicant argues, the signs at issue differ in their nature and their composition, since the earlier mark is a figurative mark composed of a word element and a figurative element, whereas the mark applied for is a word mark composed solely of a word element.

83 However, concerning the word elements, as the Board of Appeal correctly observed, the signs at issue coincide in the majority of their letters, with the exception of the sequence of letters ‘ac’ and ‘eg’ placed in the middle of the word element of the earlier mark and of the mark applied for, respectively. It follows that, contrary to what the applicant claims, the differences between the signs at issue are outweighed by the identity of the initial parts, namely ‘om’, and the final parts, namely ‘or’ of the word elements of those signs.

84 Moreover, the difference between the signs at issue stemming from the presence in the earlier mark of a figurative element does not make it possible to rule out, in itself, a visual similarity between the signs at issue, in particular, in the light of the similarity relating to the word elements of those marks.

85 Therefore, the Board of Appeal did not err in finding that the signs at issue displayed an average degree of visual similarity.

86 In paragraph 167 of the contested decision, the Board of Appeal found that there was an average degree of phonetic similarity between the signs at issue.

87 The applicant disputes the findings of the Board of Appeal. In particular, it argues that, phonetically, the signs at issue differ in the pronunciation of their sequences of central letters, namely ‘ac’ and ‘eg’. It also submits that the structure of vowels and consonants necessarily entails a phonetic difference between the signs. Furthermore, according to the applicant, the signs at issue share only one syllable, namely the first letter ‘o’. The differences which affect the other syllables therefore cause differences in intonation and rhythm when they are pronounced.

89 As a preliminary point, as regards the alleged deviation from EUIPO’s previous decision raised by the applicant, it should be borne in mind, as stated in paragraph 72 above, that the legality of the decisions of EUIPO must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

90 In the present case, concerning the pronunciation of the different elements making up the signs at issue, it should be noted, as the Board of Appeal correctly found, that there is no need to take into account the figurative element of the earlier mark for the purposes of the phonetic comparison of those signs. Therefore, the fact that no account is taken of the figurative element in the phonetic comparison of the signs at issue makes the similarities between the signs stand out more clearly than in the visual comparison.

91 That having been clarified, it must be held that only the word elements of the signs at issue, namely the word element ‘omacor’ of the earlier mark and the word element ‘omegor’ of the mark applied for, will be pronounced by the relevant public.

92 In that respect, it must be stated, as the Board of Appeal did, that the signs at issue are phonetically similar to an average degree on account of the presence of the initial sequence of letters, namely ‘om’, and the final sequence of letters, namely ‘or’ shared by those two signs. It follows that the sequence of vowels and consonants of those signs coincides, as the Board of Appeal correctly found, which makes their rhythm and intonation very similar.

93 Such a finding cannot be undermined by the applicant’s argument that the pronunciation of the signs at issue is dissimilar because the signs at issue share only one syllable, namely the first letter ‘o’. In that regard, it must be held that the differences which affect the other syllables are insufficient to significantly cause differences of intonation and rhythm in their pronunciation, since the signs at issue share the same sequence of vowels and consonants.

94 Therefore, the Board of Appeal was correct in finding that the signs at issue were phonetically similar to an average degree.

95 In paragraph 168 of the contested decision, the Board of Appeal took the view that the marks at issue, taken as whole, had no meaning for the relevant public. Nevertheless, it examined the possibility of associating the contested mark with the twenty-fourth and last letter of the Greek alphabet, ‘Ω’ (omega), finding that the mark applied for did not convey any specific meaning for the relevant public and that the word element of the earlier mark, namely ‘omacor’ is not associated with any meaning.

96 The applicant disputes the findings of the Board of Appeal and submits that the term ‘omeg’ in the mark applied for is perceived, for products containing Omega‑3, as referring to the twenty-fourth and last letter of the Greek alphabet. It also argues that the word ‘omega’ is almost entirely included in the earlier mark with the result that it would easily be perceived by a large part of the relevant public as referring to the twenty-fourth and last letter of the Greek alphabet. The applicant claims that, consequently, the marks at issue are conceptually dissimilar.

98 It must be held, as the Board of Appeal found, that the word elements ‘omegor’ and ‘omacor’ have no meaning. Even if a part of the relevant public recognises in the element ‘omegor’ a reference to the Greek letter ‘omega’, that would not call into question the lack of meaning for that part of the public of the word ‘omegor’.

99 In that regard, it follows from the case-law that, where neither of the signs at issue has any meaning taken as a whole, it must be held that a conceptual comparison is not possible (see judgment of 6 April 2022, Agora Invest v EUIPO – Transportes Maquinaria y Obras (TRAMOSA), T‑219/21, not published, EU:T:2022:219, paragraph 117 and the case-law cited).

100 Therefore, the Board of Appeal was correct in finding that the signs at issue had no meaning, which made their conceptual comparison impossible.

101 A 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 that of the goods or services covered. 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).

102 In the present case, the Board of Appeal took the view that, given the lack of meaning of the earlier figurative mark’s word element and the fact that the figurative element of that mark was unremarkable, that mark had a normal degree of inherent distinctiveness. Furthermore, having recalled that the signs at issue were visually and phonetically similar to an average degree, it found that there was a likelihood of confusion both on the part of the public at large and the public of professionals of which the relevant public consists.

103 According to the applicant, the differences between the goods in question, the visual, phonetic and conceptual differences between the signs at issue and the above average level of attention of the relevant public are of such a nature as to rule out a likelihood of confusion.

105 In the first place, the applicant does not dispute the Board of Appeal’s assessment that the word element of the earlier figurative mark has a normal degree of inherent distinctiveness in respect of the goods concerned.

106 In the second place, as is apparent from the grounds of the present judgment, the Board of Appeal’s findings concerning the definition and the level of attention of the relevant public, the similarity of the goods in question and the similarity of the signs at issue are not vitiated by error.

107 Therefore, the fact that the level of attention of the relevant public is high or above average is insufficient to rule out that that public believes that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

108 It follows from all of the foregoing considerations that the single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and the action dismissed in its entirety.

109 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.

110 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event of the parties being summoned to attend an oral hearing. In the absence of a hearing, it is appropriate to order each party to bear its own costs.

2. Orders UGA Nutraceuticals Srl and the European Union Intellectual Property Office (EUIPO) to bear their own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> UGA Nutraceuticals v EUIPO - BASF (OMEGOR) (EU trade mark - Judgment) [2023] EUECJ T-495/22 (28 June 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T49522.html Cite as: [2023] EUECJ T-495/22, EU:T:2023:359, ECLI:EU:T:2023:359

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