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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Dr. August Wolff v EUIPO - Combe International (Vagisan) (EU trade mark - Judgment) [2025] EUECJ T-679/20 (30 April 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T67920.html Cite as: ECLI:EU:T:2025:421, [2025] EUECJ T-679/20, EU:T:2025:421 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
30 April 2025 (*)
( EU trade mark - Invalidity proceedings - International registration designating the European Union - Word mark Vagisan - Earlier national word marks VAGISIL - Relative ground for invalidity - Likelihood of confusion - Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) - Agreement on the withdrawal of the United Kingdom from the European Union and from Euratom - End of the transition period during the court proceedings )
In Case T‑679/20,
Dr. August Wolff GmbH & Co. KG Arzneimittel, established in Bielefeld (Germany), represented by M. Breuer and F. von der Decken, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Combe International LLC, established in New York, New York (United States), represented by M. Kinkeldey, S. Brandstätter and S. Clotten, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, W. Valasidis (Rapporteur) and L. Spangsberg Grønfeldt, Judges,
Registrar: R. Ukelyte, Administrator,
having regard to the written part of the procedure, in particular:
– the order of 1 July 2021 reserving the examination of the application for a declaration that there is no need to adjudicate on the substance of the case;
– the order of 7 April 2022, Dr. August Wolff v EUIPO – Combe International (Vagisan) (T‑679/20, not published, EU:T:2022:232), dismissing the intervener's cross-claim as inadmissible;
– the decision of 19 January 2023 to stay the proceedings until delivery of the decision closing the proceedings in the case which gave rise to the judgment of 20 June 2024, EUIPO v Indo European Foods (C‑801/21 P, EU:C:2024:528);
– the reassignment of the case to a new Judge-Rapporteur;
– the measure of organisation of procedure of 28 June 2024 inviting the parties to submit their observations on the consequences to be drawn, for the present case, from the judgment of 20 June 2024, EUIPO v Indo European Foods (C‑801/21 P, EU:C:2024:528), and the replies of the parties lodged at the Registry of the General Court on 16 July 2024,
further to the hearings on 8 November 2022 and 25 November 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Dr. August Wolff GmbH & Co. KG Arzneimittel, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 September 2020 (Case R 2459/2019-4) ('the contested decision').
I. Background to the dispute
2 On 18 November 2011, the applicant obtained from the International Bureau of the World Intellectual Property Organization (WIPO) international registration No 10 985 168 designating the European Union in respect of the word mark Vagisan. That international registration was notified to EUIPO on 2 February 2012 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 in respect of which the mark was registered were, following the restriction made in the course of the proceedings before EUIPO, in Classes 3 and 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 corresponded, for each of those classes, to the following description:
– Class 3: 'Soaps, perfumery, essential oils, cosmetics, hair lotions; all the aforementioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora';
– Class 5: 'Pharmaceutical products; sanitary products for medical purposes; dietetic substances adapted for medical purposes; all the aforementioned goods for personal hygiene in the intimate area, for vaginal dryness and to support the vaginal flora'.
4 On 2 December 2017, the intervener, Combe International LLC, filed with EUIPO an application for a declaration of invalidity of the contested mark.
5 The application for a declaration of invalidity was based, inter alia, on earlier Spanish, Italian, Polish and Portuguese marks and on the following earlier marks:
– the United Kingdom word mark VAGISIL, filed and registered on 6 February 1985 under No 1 235 127 and renewed until 6 February 2026, covering goods in Class 3 corresponding to the following description: 'Non-medicated toilet preparations; soaps; deodorants for personal use; anti-perspirants; non-medicated preparations for the care of the skin and body; talcum powder for toilet use and cosmetic powders for the body';
– the United Kingdom word mark VAGISIL, filed on 24 February 2006, registered on 25 August 2006 under No 2 414 935 and renewed until 24 February 2026, covering goods in Class 5 and corresponding to the following description: 'Medicated, pharmaceutical and sanitary products and substances; sanitary napkins, towels, towelletes, pads, tampons, panties and panty-liners, all for hygienic purposes; wipes, tissues and towelletes impregnated with pharmaceutical lotions; medicated feminine hygiene wipes'.
6 The ground relied on in support of the application for a declaration of invalidity was, in particular, that referred to in Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.
7 On 11 September 2019, the Cancellation Division upheld the application for a declaration of invalidity.
8 On 30 October 2019, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9 By the contested decision, the Board of Appeal dismissed the appeal. First, in following the approach of the Cancellation Division, it relied solely on the two earlier United Kingdom word marks VAGISIL, Nos 1 235 127 and 2 414 935, for the purposes of assessing whether there was a likelihood of confusion. Moreover, it stated that the intervener could rely on the earlier rights protected in the United Kingdom until the end of the transition period laid down in the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; 'the Withdrawal Agreement'). Secondly, the Board of Appeal found that the relevant territory for the assessment of the likelihood of confusion was that of the United Kingdom. Thirdly, it noted that the goods at issue were aimed at the female public and professionals, whose level of attention varied from above average to high. Fourthly, it found that the goods in Class 3 covered by the contested mark were identical to the goods covered by the earlier word marks and also that the goods in Class 5 covered by the contested mark were in part identical and in part similar to an average degree to those covered by the earlier marks. Fifthly, the Board of Appeal found that the signs at issue were visually and phonetically similar to an average degree and conceptually similar to a low degree. Taking into account the average degree of visual and phonetic similarity, the at-least-average degree of identity or similarity of the goods at issue and the average degree of inherent distinctiveness of the earlier marks, it concluded that there was a likelihood of confusion on the part of the relevant public.
II. Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– annul the decision of the Cancellation Division of 11 September 2019;
– order EUIPO and, as the case may be, the intervener to pay the costs, including those incurred in the proceedings before EUIPO.
11 EUIPO contends that the Court should declare that there is no need to adjudicate on the action or, in the alternative, dismiss the action and order the applicant to pay the costs.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant and EUIPO to pay the costs.
III. Law
A. The applicable law ratione temporis
13 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 (OJ 2003 L 296, p. 22), as amended on 12 November 2007, the date on which the international registration designating the European Union is obtained corresponds to the date of the filing, with the office dealing with the request, of the application for registration of the mark for which protection is sought throughout the territory of the parties to the Madrid Agreement.
14 Given the date on which the application for registration at issue was filed, namely 18 November 2011, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
15 Accordingly, in the present case, so far as concerns the substantive rules, the references made to Article 60(1)(a) and 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 references to Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, which have an identical meaning.
B. The application for a declaration that there is no need to adjudicate
16 On 29 March 2021, EUIPO asked the Court to declare that there was no longer any need to adjudicate on the action. In essence, it submits that, in so far as the Board of Appeal upheld the application for a declaration of invalidity on the basis of two earlier United Kingdom marks, the expiry of the transition period provided for in the Withdrawal Agreement rendered the invalidity proceedings and the action before the Court devoid of purpose. According to EUIPO, as from the end of the transition period, the contested mark has no legal effect in the territory of the United Kingdom, and the two earlier marks, relied on in support of the application for a declaration of invalidity, no longer constitute 'trade marks registered in a Member State' within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009. In addition, no future conflict can arise between the earlier marks and the contested mark, since the latter will not be protected in the United Kingdom, whereas the earlier marks will be exclusively protected in the United Kingdom.
17 At the hearing, EUIPO stated that, since the end of the transition period, on 1 January 2021, the contested decision had lapsed in so far as it concerned a conflict which had ceased to exist.
18 Although, in its observations on the application for a declaration that there is no need to adjudicate, lodged at the Court Registry on 26 April 2021, the applicant stated that it did not oppose EUIPO's application for a declaration that there is no need to adjudicate, it nevertheless stated, at the hearing, that it retained an interest in having the contested decision annulled.
19 In its observations on the application for a declaration that there is no need to adjudicate, lodged at the Court Registry on 28 April 2021, the intervener disputed that there was no need to adjudicate. In particular, it claimed that EUIPO had failed to take into consideration, in its application for a declaration that there is no need to adjudicate, the automatic creation, on 1 January 2021, of United Kingdom trade mark No UK00 810 985 168 Vagisan resulting from the contested mark, the validity of which depended on the validity of the contested mark.
20 It should be borne in mind that, according to the case-law, the purpose of the action must, like the interest in bringing proceedings, continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it (see, to that effect, judgment of 4 September 2018, ClientEarth v Commission, C‑57/16 P, EU:C:2018:660, paragraph 43 and the case-law cited, and order of 30 April 2020, Cyprus v EUIPO, C‑608/18 P, C‑609/18 P and C‑767/18 P, not published, EU:C:2020:347, paragraphs 27 and 28 and the case-law cited).
21 It should also be borne in mind that the Withdrawal Agreement, which was adopted on 17 October 2019 and entered into force on 1 February 2020, provides, in Article 126, for a transition period from 1 February to 31 December 2020. Since the expiry of that transition period, the withdrawal of the United Kingdom from the European Union has been fully effective. Since 1 January 2021, the earlier United Kingdom marks have therefore lost the status of earlier marks, that is to say, 'trade marks registered in a Member State' within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001).
22 Article 54(1)(a) and (5)(a) of the Withdrawal Agreement provides that holders of a European Union trade mark registered until 31 December 2020 are automatically to have a trade mark in the United Kingdom, consisting of the same sign, covering the same goods and services and having the same filing or priority date as that of the European Union trade mark. It also follows from Article 54(3) thereof that, if a European Union trade mark is declared invalid or revoked in the European Union as the result of an administrative or judicial procedure which was ongoing on the last day of the transition period, the corresponding right in the United Kingdom is, in principle, to be declared invalid or revoked.
23 Article 127 of the Withdrawal Agreement states that, unless otherwise provided, EU law continues to be applicable in the United Kingdom during the transition period. By contrast, as from 1 January 2021, EU trade mark legislation no longer applies to the United Kingdom and within its territory, unless and to the extent that such continued application is explicitly provided for by the Withdrawal Agreement.
1. Whether the subject matter of the dispute still obtains
24 The present dispute concerns the legality of the contested decision in which the Board of Appeal, for reasons of procedural economy, examined the application for a declaration of invalidity solely in relation to the earlier United Kingdom marks, even though that application was based on other marks (see paragraph 5 above). The contested decision, adopted on 3 September 2020, was given during the transition period, that is to say, on a date on which, in the absence of provisions to the contrary in the Withdrawal Agreement, EU trade mark legislation continued to apply in the United Kingdom and, therefore, the earlier United Kingdom marks continued to enjoy the same protection as they would have enjoyed had the United Kingdom not withdrawn from the European Union, until the end of the transition period.
25 In the present case, it must be stated that the contested decision was not formally withdrawn and that the end of the transition period did not have the effect of retroactively eliminating that decision (see, to that effect, judgment of 20 June 2024, EUIPO v Indo European Foods, C‑801/21 P, EU:C:2024:528, paragraph 61).
26 Accordingly, despite the end of the transition period, which occurred during the proceedings before the General Court, the dispute retains its purpose.
2. Whether the interest in bringing proceedings still obtains
27 According to settled case-law, the existence of an interest in bringing proceedings requires that the annulment of the contested act must be capable, in itself, of having legal consequences and that the action may therefore, through its outcome, procure an advantage to the party which brought it (see judgment of 17 September 2015, Mory and Others v Commission, C‑33/14 P, EU:C:2015:609, paragraph 55 and the case-law cited; judgment of 20 June 2024, EUIPO v Indo European Foods, C‑801/21 P, EU:C:2024:528, paragraph 80).
28 The question whether an applicant retains its interest in bringing proceedings must be assessed in the light of the specific circumstances, taking account, in particular, of the consequences of the alleged unlawfulness and of the nature of the damage claimed to have been sustained (see, to that effect, judgment of 28 May 2013, Abdulrahim v Council and Commission, C‑239/12 P, EU:C:2013:331, paragraph 65).
29 In the present case, it is common ground that the applicant has an interest in obtaining the annulment of the contested decision, which is unfavourable to it. It is apparent from paragraph 65 of the contested decision and from point 1 of its operative part that the Board of Appeal confirmed the decision of the Cancellation Division, which had upheld the application for a declaration of invalidity filed by the intervener and had declared the contested mark invalid. Therefore, if the Court were to annul the contested decision, the confirmation of the declaration of invalidity of the contested mark would be invalidated and it would be for EUIPO to take the necessary measures to comply with the judgment of the Court. By contrast, if the present action were dismissed, the invalidity of the applicant's mark would take effect, subject to any appeal, from the date of that dismissal.
30 Accordingly, the fact that the transition period provided for in Articles 126 and 127 of the Withdrawal Agreement came to an end in the course of the present proceedings does not remove the applicant's interest in obtaining the annulment of the contested decision.
31 Furthermore, if the Court were to uphold the action by annulling the contested decision and EUIPO consequently withdraw the declaration of invalidity of the contested mark, United Kingdom trade mark right No UK00 810 985 168 Vagisan, the validity of which is linked to that of the contested mark, would remain valid, pursuant to Article 54(3) of the Withdrawal Agreement.
32 Accordingly, the application for a declaration that there is no need to adjudicate made by EUIPO must be rejected.
C. Substance
33 In its application, the applicant relies on a single plea in law, alleging infringement by the Board of Appeal of Article 8(1)(b) of Regulation No 207/2009. In its supplementary statement of 12 January 2021, the applicant submitted a new plea in law, based on the expiry of the transition period provided for in the Withdrawal Agreement, which will be dealt with as the second plea in law. It is appropriate to begin by examining the second plea in law, the admissibility of which is not disputed.
1. The second plea in law, relating to the expiry of the transition period provided for in the Withdrawal Agreement
34 The applicant claimed that, as from the expiry of the transition period, the earlier marks, relied on in support of the application for a declaration of invalidity, no longer enjoyed the protection of the European Union and that, consequently, as from 1 January 2021, the application for a declaration of invalidity based on those marks was unfounded. At the hearing, the applicant stated that, by that plea, it was challenging the legality of the contested decision, since the earlier marks had lost their status as a trade mark registered in a Member State after the action had been brought against the contested decision.
35 EUIPO and the intervener dispute the applicant's arguments.
36 In that regard, it should be borne in mind that, according to the case-law, the purpose of actions before the Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal of EUIPO and that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited; judgment of 3 December 2015, TrekStor v OHIM – Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 15). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
37 Accordingly, the fact that the transition period expired on 1 January 2021, that is to say, after the adoption of the contested decision, is irrelevant for the purpose of reviewing the legality of that decision.
38 The second plea in law must therefore be dismissed as ineffective.
2. The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
39 The applicant submits, in essence, that there is no likelihood of confusion on the part of the relevant public. It disputes the Board of Appeal's analysis relating to (i) the distinctive character of the earlier marks, (ii) the similarity of the signs at issue and (iii) the likelihood of confusion.
40 EUIPO and the intervener dispute the applicant's arguments.
41 In accordance with a combined reading of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, upon application of the proprietor of an earlier trade mark, the registered EU trade mark is to be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
42 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. 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).
43 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 (judgments of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 47, and of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42).
44 As a preliminary point, it should be borne in mind that the Board of Appeal found that the goods concerned, referred to in paragraph 3 above, addressed the female public and professionals, whose level of attention varied from above average to high. It also found that the goods at issue were either identical or similar. The applicant does not dispute those findings of the Board of Appeal, which, moreover, are not called into question by any evidence in the file.
(a) The comparison of the signs
45 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).
46 In the present case, before addressing the issue of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal's assessment of the distinctive and dominant elements of the marks at issue.
(1) The distinctive and dominant elements
47 In order to determine the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 27 February 2008, Citigroup v OHIM – Link Interchange Network (WORLDLINK), T‑325/04, not published, EU:T:2008:51, paragraph 66).
48 It should also be noted that, even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, by analogy, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a word sign, he or she will identify word elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see, to that effect, judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57).
49 In the present case, the earlier marks consist of the word element 'vagisil', whereas the contested mark consists of the word element 'vagisan'.
50 In the contested decision, the Board of Appeal found that the word element 'vagi', common to the signs at issue, would be immediately perceived by the relevant public as a reference to the English word 'vagina', in truncated form, or, at the very least, as alluding to the intended purpose of the goods at issue. It therefore has a weak distinctive character. It found that, in spite of its weak distinctive character, that element made a significant contribution to the overall impression produced by the signs at issue on account of its length and the fact that it is placed first, and that the relevant public would attribute to that element at least as much importance as to the final part of the signs at issue. In addition, it found that the suffixes 'sil' and 'san' of the signs at issue had no particular meaning for the relevant public.
51 The applicant disputes the Board of Appeal's assessment that the word element 'vagi' of the signs at issue, despite its weak distinctive character, has as much importance as their endings 'sil' or 'san'. According to the applicant, the attention of the relevant public is drawn to those endings.
52 EUIPO and the intervener dispute the applicant's arguments.
53 In that regard, it should be noted that the Board of Appeal found, without being contradicted by the applicant, that, having regard to the fact that the goods at issue are intended for female intimate health care, the relevant public was likely to understand the common element 'vagi' of the signs at issue as a reference to the English word 'vagina' and therefore as alluding to the intended purpose of those goods.
54 Consequently, as the Board of Appeal correctly found, the element 'vagi' has only a weak distinctive character. By contrast, the elements 'sil' and 'san' of the signs at issue have no meaning for the relevant public.
55 However, the fact that the common element 'vagi' may be perceived as alluding to the intended purpose of the goods at issue does not necessarily mean that it will be negligible in the overall impression created by the signs at issue. It is necessary to examine whether other elements of those signs appear likely to make an impression on the public and to be remembered by it (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 49 and the case-law cited).
56 In that regard, it is important to take into consideration the fact that the word element 'vagi' is placed at the beginning of the signs at issue and has a significant length and that it consists of two syllables, whereas the endings 'sil' and 'san' consist of only one syllable. In that context, the applicant is not justified in claiming that the public's attention will focus on those endings.
57 Therefore, in spite of its weak distinctive character, the element 'vagi', which is common to the marks at issue, must nevertheless be taken into account in the assessment of the visual, phonetic and conceptual similarity of the signs at issue.
(2) The visual and phonetic comparison
58 In the contested decision, the Board of Appeal found that the signs at issue were visually similar to an average degree since they coincided in the presence of the letter sequence 'vagis' and thus had five of their seven letters in common, placed in the same order. It found that, since the consumer only rarely had the chance to make a direct comparison between the different marks, the fact that the last two letters were different was not sufficient to counteract the visual similarity created by the five letters in common.
59 The Board of Appeal also found that the first part of the two earlier marks and the initial part of the contested mark coincided phonetically, with the result that there was an average degree of similarity in that regard between the signs at issue. It also found that those signs had the same syllabic structure and that they were pronounced with the same intonation and rhythm by the relevant public.
60 The applicant disputes those findings of the Board of Appeal. The applicant submits that the signs at issue are different visually and phonetically or, at most, similar to a very low degree. According to the applicant, the signs at issue coincide only in the word element 'vagi', which has a weak distinctive character. Consequently, the public's attention would focus on the differences between the signs, namely the final elements 'san' and 'sil'.
61 EUIPO and the intervener dispute the applicant's arguments.
62 As regards the visual comparison, it should be borne in mind that the applicant's argument that the public's attention would focus on the endings of the signs at issue was rejected (see paragraph 56 above). Furthermore, it must be held, as the Board of Appeal found, that the signs at issue are made up of seven letters, the first five of which are identical and placed in the same order. Those signs differ, by contrast, in their last two letters. However, the difference created by the two different letters of the marks at issue is not sufficient to offset the visual similarity resulting from the presence of the other letters in common.
63 Consequently, the Board of Appeal duly took into account both the similarities and the differences between the signs at issue and correctly found that the signs at issue were visually similar to an average degree.
64 As regards the phonetic comparison, it must be stated that the signs at issue each consist of three syllables, the pronunciation of the first two syllables 'va' and 'gi' being identical. The pronunciation of those signs differs only in the third syllable, 'sil' and 'san' respectively, which begins in both cases with the consonant 's'.
65 Thus, the phonetic similarity of the signs at issue stems from the identical pronunciation of the first two syllables 'va' and 'gi', the presence of the consonant 's' in the pronunciation of the third syllable, and the common rhythm and intonation in the pronunciation of those signs.
66 In those circumstances, the Board of Appeal did not make an error of assessment in finding that the signs at issue were phonetically similar to an average degree.
67 The findings set out in paragraphs 63 and 66 above cannot be called into question by the applicant's argument alleging failure to observe the decision-making practice of EUIPO. As the applicant itself indeed acknowledges, EUIPO is required to decide on the basis of the circumstances of each individual case and is not bound by previous decisions adopted in other cases. The legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of any previous decision-making practice. Furthermore, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 39 and the case-law cited). It follows that such a line of argument is ineffective.
68 In any event, it should be noted that, unlike the present case, the case which gave rise to the decision of the Fourth Board of Appeal of EUIPO of 8 May 2020 (Case R 1576/2019-4), relied on by the applicant, concerns a situation in which the signs at issue differed in the figurative element placed in the upper part of the earlier sign and in the length of the word elements of which they were composed, namely seven letters in the earlier sign and nine letters in the contested sign. In addition, the endings of the word elements 'vagisil' and 'vaginelle' were visually distinct, despite the presence of the letter 'l', which has different positions in the signs at issue.
69 It should be added that those findings are also not called into question by the judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE) (T‑602/19, not published, EU:T:2020:463), relied on by the applicant at the hearing, in which the Court found that the degree of visual and phonetic similarity of the signs concerned was low. In that case, the Court held that the suffixes of each of the signs concerned, namely 'lium' and 'nove', although having the same number of letters, were totally different, with the result that they differed radically, both visually and phonetically, whereas, in the present case, the suffixes 'sil' and 'san' begin with the consonant 's' and, therefore, do not differ radically from each other.
70 The present case also differs from that which gave rise to the judgment of 15 October 2020, Laboratorios Ern v EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE) (T‑2/20, not published, EU:T:2020:493), relied on by the applicant. In that case, the signs concerned differed markedly in the presence, in the sign which was the subject of the trade mark application, of figurative elements and an expression containing five words which were not negligible, whereas, in the present case, the signs at issue consist only of one word element.
(3) The conceptual comparison
71 Conceptually, the Board of Appeal found that neither of the signs at issue had any meaning in its entirety. Nevertheless, according to the Board of Appeal, there is a low degree of conceptual similarity between those signs on account of the presence of the weakly distinctive element 'vagi'.
72 There is no need to call into question that assessment, which, as the applicant confirmed at the hearing, is not disputed.
73 As regards the applicant's argument that the suffixes 'sil' and 'san' are conceptually different from each other, since the word element 'san' of the contested mark will be understood by the relevant public as corresponding to the abbreviation of the Latin word 'sanitas', it is sufficient to note that that argument has in no way been developed or substantiated by any evidence. It must, therefore, be rejected.
(b) The distinctive character of the earlier marks
74 In the contested decision, the Board of Appeal found that the earlier marks had no meaning as a whole in relation to the goods they covered and that they therefore had an average degree of inherent distinctiveness.
75 The applicant takes the view, in essence, that the Board of Appeal incorrectly assessed the degree of inherent distinctiveness of the earlier marks. According to the applicant, the earlier marks have only a low degree of distinctiveness since the distinctive character of the word element 'vagi' is also weak.
76 EUIPO and the intervener dispute that line of argument.
77 In that regard, it follows from paragraph 54 above that the element 'vagi' has a weak distinctive character in respect of the goods at issue. By contrast, the element 'sil' has no meaning in relation to the goods at issue.
78 It follows that, contrary to the finding of the Board of Appeal, the earlier marks have a low degree of inherent distinctiveness.
79 However, the error made by the Board of Appeal as regards the distinctive character of the earlier marks has no bearing on the legality of the contested decision for the reasons set out in paragraph 89 below.
(c) The global assessment of the likelihood of confusion
80 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).
81 Furthermore, it follows from the case-law that when the elements of similarity between two signs arise from the fact that they share a component which has a weak distinctive character, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgment of 22 February 2018, International Gaming Projects v EUIPO – Zitro IP (TRIPLE TURBO), T‑210/17, not published, EU:T:2018:91, paragraph 73 and the case-law cited).
82 The Board of Appeal found that, in view of the average degree of visual and phonetic similarity between the signs at issue, the identity or at-least-average degree of similarity of the goods at issue and the earlier trade marks' average degree of inherent distinctiveness, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, even if the relevant public had a 'higher' level of attention.
83 The applicant submits that the Board of Appeal incorrectly weighted the relevant factors in the global assessment of the likelihood of confusion, including the marketing conditions. According to the applicant, since the word element 'vagi' of the signs at issue has a weak distinctive character, its impact on the global assessment of the likelihood of confusion is itself low. It also submits that the weak distinctive character of the earlier marks, the average or high level of attention of the relevant public and the dissimilarity, or at most, 'very low' degree of similarity between the signs at issue excluded any likelihood of confusion.
84 EUIPO and the intervener dispute the applicant's arguments.
85 First, it follows from what was stated above that the goods at issue are either identical or similar.
86 Secondly, the signs at issue are visually and phonetically similar to an average degree (see paragraphs 63 and 66 above). The fact that the element 'vagi' alludes to the intended purpose of the goods at issue cannot have the effect of excluding the similarities between those signs resulting from that element common to those signs and from the fact that their structure, rhythm and intonation are identical. The signs at issue have five letters out of a total of seven in common, placed in the same order ('v', 'a', 'g', 'i' and 's'). Moreover, the relevant public's attention will not be drawn to the different endings of the signs at issue ('il' and 'an'), while there is no conceptual difference to help to distinguish those signs.
87 Thirdly, as regards the applicant's argument that, in view of the circumstances in which the goods at issue are marketed, the visual aspect plays a particularly important role in the assessment of the likelihood of confusion, it is sufficient to note that the signs at issue are visually similar to an average degree.
88 Fourthly, as has been stated in paragraph 78 above, the earlier marks have a weak distinctive character.
89 Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor, among others, involved in that assessment. Thus, even in a case involving an earlier mark with a weak distinctive character, the General Court may hold that there is a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 63 and the case-law cited).
90 In the light of all of the factors referred to in paragraphs 85 to 89 above, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion.
91 In the light of all of the above considerations, the first plea must be rejected and, therefore, the action must be dismissed in its entirety.
IV. Costs
92 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.
93 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the application for a declaration that there is no need to adjudicate;
2. Dismisses the action;
3. Orders Dr. August Wolff GmbH & Co. KG Arzneimittel to pay the costs.
Marcoulli | Valasidis | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 30 April 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
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