21 September 2017 (*)

(EU trade mark — Opposition proceedings — Application for the EU word mark Zimara — Earlier EU word mark FEMARA — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 75 of Regulation No 207/2009 — Article 76(1) of Regulation No 207/2009 — Obligation to decide on the entirety of the appeal — First sentence of Article 64(1) of Regulation No 207/2009)

In Case T‑238/15,

Novartis AG,

established in Basle (Switzerland), represented by M. Douglas, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by H. O’Neill, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Meda AB,

established in Solna (Sweden),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 March 2015 (Case R 636/2014-5) relating to opposition proceedings between Novartis and Meda,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 13 May 2015,

having regard to the response lodged at the Court Registry on 20 August 2015,

having regard to the reply lodged at the Court Registry on 27 October 2015,

having regard to the rejoinder lodged at the Court Registry on 4 January 2016,

having regard to the written question put by the Court to the parties and the answer to that question lodged by EUIPO at the Court Registry on 6 December 2016,

further to the hearing on 12 January 2017,

gives the following

I.Background to the dispute

1On 3 March 2011, Meda AB 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 European Union trade mark (OJ 2009 L 78, p. 1).

2Registration as a mark was sought for the word sign Zimara.

3The goods in respect of which registration was sought are 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 correspond, for each of those classes, following the restrictions made during the opposition proceedings, to the following description:

–Class 3: ‘Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics (not for dental use), hair lotions’;

–Class 5: ‘Pharmaceutical and veterinary preparations excluding blood products and preparations for the treatment of blood disorders and bleeding diseases; sanitary preparations for medical use; plasters, materials for dressings, except for drugs for use in the cardiovascular system (all of the aforementioned products not for use in the dental field and excluding ophthalmic preparations)’.

4The EU trade mark application was published in Community Trade Marks Bulletin No 115/2011 of 21 June 2011.

5On 19 September 2011, the applicant, Novartis AG, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the following goods in Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical use’.

6The opposition was based on the EU word mark FEMARA, registered on 28 May 1999 for the goods in Class 5 corresponding to the following description: ‘Pharmaceutical preparations’.

7The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8By letter of 18 December 2012, Meda requested proof of genuine use of the earlier mark on which the opposition was based. The Opposition Division therefore invited the applicant, pursuant to Article 42(2) of Regulation No 207/2009, to furnish that proof.

9On 9 January 2014, the Opposition Division rejected the opposition. In particular, it found that the applicant had demonstrated genuine use of the earlier mark, during the relevant period, only for pharmaceutical preparations for the treatment of breast cancer. Moreover, it found that the goods at issue were partly identical, partly similar to a high degree, and partly similar, and that the marks at issue were visually and phonetically similar to a certain degree. It found that there was no likelihood of confusion, taking account in particular of the fact that, in its view, the beginning of the mark applied for was very different from that of the earlier mark.

10On 27 February 2014, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11By decision of 6 March 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the Opposition Division had correctly defined the sub-category for which the applicant had demonstrated genuine use of the earlier mark, namely that of pharmaceutical preparations for the treatment of breast cancer. Moreover, it noted that, even if EUIPO had considered that genuine use had been demonstrated for the category of ‘pharmaceutical preparations for the treatment of cancer’, in accordance with the applicant’s line of argument, that would not have changed anything, with regard to either the result of the comparison of the goods or the outcome of the case.

12The Board of Appeal stated, in paragraph 4 of the contested decision, that the opposition was directed against ‘pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use’, which it regarded as covered by the mark applied for.

13The Board of Appeal stated that the relevant territory was that of the European Union and that the goods at issue were aimed at professionals in the medical sector and average consumers as end consumers. It also found, in paragraph 33 of the contested decision, that the relevant public displayed a high level of attention in relation to the goods at issue.

14The Board of Appeal found that the ‘pharmaceutical preparations’ covered by the mark applied for were identical to ‘pharmaceutical preparations for the treatment of breast cancer’, for which genuine use of the earlier mark had been demonstrated. Furthermore, it found that there was a low degree of similarity between the ‘sanitary preparations for medical purposes’ and the ‘dietetic substances adapted for medical use’, which it regarded as covered by the mark applied for, on the one hand, and the ‘pharmaceutical preparations for the treatment of breast cancer’, on the other.

15According to the Board of Appeal, there is a very low degree of visual similarity and a low degree of phonetic similarity between the mark applied for and the earlier mark. As regards the phonetic similarity, it found that the marks were pronounced ‘zi-ma-ra’ and ‘fe-ma-ra’ in accordance with the pronunciation rules of the respective languages. As regards the English-speaking part of the relevant public, the Board of Appeal found that it would pronounce the letter ‘i’ of the Zimara mark like the ‘i’ in the English word ‘zip’ and the letter ‘e’ in the FEMARA mark like the ‘e’ in the English word ‘lemon’.

16The Board of Appeal concluded that there was no likelihood of confusion, in particular in the light of the low degree of similarity between the mark applied for and the earlier mark, the fact that the difference between the marks was at the beginning of them, and the high level of attention of the relevant public concerning the goods at issue.

II.Forms of order sought

17The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO to pay the costs.

18EUIPO contends that the Court should:

–dismiss the application;

–order the applicant to pay the costs.

III.Law

A.The incorrect identification of the goods forming the subject matter of the appeal and the failure to adjudicate in respect of certain goods

19It should be noted, first, that the Board of Appeal committed errors in identifying the goods forming the subject matter of the opposition.

20It is true that the Board of Appeal correctly identified, in paragraph 1 of the contested decision, the goods forming the subject matter of the trade mark application.

21However, in stating, in paragraph 4 of the contested decision, that the opposition was directed against ‘pharmaceutical preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use’, the Board of Appeal reproduced the content of paragraph 4 of the decision of the Fifth Board of Appeal of EUIPO of 6 February 2015 (Case R 550/2014-5) relating to opposition proceedings between the same parties and concerning the application for the EU word mark Zymara, the decision forming the subject matter of the action in Case T‑238/15 (Novartis v EUIPO — Meda). The Board of Appeal did not take into consideration the fact that the lists of goods covered by the mark applied for and the mark Zymara, and the lists of goods against which the oppositions were directed, were in part different.

22Thus, in the present case, Meda did not claim protection of the mark applied for in respect of ‘dietetic substances adapted for medical use’. Consequently, the opposition was not directed, and moreover could not be directed, against those goods.

23Furthermore, the Board of Appeal considered that the opposition was directed against ‘pharmaceutical preparations’ only, whereas, in the present case, it was directed against ‘pharmaceutical and veterinary preparations’. The Board of Appeal did not make any assessment concerning ‘veterinary preparations’, since it did not note that the opposition was also directed against those goods.

24Furthermore, Meda had claimed in the present case protection of the mark applied for ‘sanitary preparations for medical use’,which is slightly different wording from the ‘sanitary preparations for medical purposes’,examined by the Board of Appeal in the contested decision.

25For its part, the Opposition Division had correctly identified the goods forming the subject matter of the opposition in its decision of 9 January 2014, namely ‘pharmaceutical and veterinary preparations; sanitary preparations for medical use’. That decision of the Opposition Division having been contested in its entirety by the applicant before the Board of Appeal, those goods consequently formed the subject matter of the dispute before the Board of Appeal.

26It is therefore necessary to examine the implications of the errors committed by the Board of Appeal, concerning the identification of the goods forming the subject matter of the opposition on the legality of the contested decision.

27In the first place, as regards the Board of Appeal’s explanations concerning ‘dietetic substances adapted for medical use’, it is sufficient to note that they are merely superfluous, since the mark applied for did not cover those goods and they formed neither the subject matter of the opposition nor that of the appeal before the Board of Appeal. The fact that the contested decision contains superfluous explanations outside the scope of the dispute before the Board of Appeal has no effect, however, on the legality of the contested decision. The arguments put forward by the applicant with regard to those goods are ineffective, since those goods were not covered by the mark applied for and the opposition was not directed against those goods. Since those arguments are ineffective, they will not be examined in the remainder of the present judgment.

28In the second place, as regards ‘veterinary preparations’, which the Board of Appeal failed to examine, it should be noted, at the outset, that, under the first sentence of Article 64(1) of Regulation No 207/2009, ‘[f]ollowing the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’. That obligation must be understood as meaning that the Board of Appeal is required to rule on each of the heads of claim before it in full by upholding it, dismissing it as inadmissible or dismissing it in substance. Since disregard of that obligation can affect the content of the Board of Appeal’s decision, this is a question of an essential procedural requirement, the infringement of which can be raised by the Court of its own motion (judgment of 10 June 2008, Gabel Industria Tessile v OHIM — Creaciones Garel (GABEL), T‑85/07, EU:T:2008:186, paragraph 20).

29In the present case, it must be noted that the Board of Appeal failed to decide on the appeal before it in so far as it concerned the rejection of the opposition concerning ‘veterinary preparations’. The Board of Appeal erred in identifying the goods forming the subject matter of the opposition and, consequently, also with regard to the goods forming the subject matter of the appeal before it.

30The Board of Appeal accordingly infringed the obligation, arising under the first sentence of Article 64(1) of Regulation No 207/2009, to rule on each head of claim before it in its entirety.

31In reply to a written question put by the Court, EUIPO submitted that it was necessary to consider that the Board of Appeal had endorsed the finding of the Opposition Division that ‘veterinary preparations’ and ‘pharmaceutical preparations for the treatment of breast cancer’ were similar.

32However, that argument cannot be upheld. In the present case, the Board of Appeal erred concerning the identification of the goods forming the subject matter of the opposition and the appeal before it. It did not even note that ‘veterinary preparations’ formed the subject matter of the dispute before it. It cannot therefore be accepted that the Board of Appeal intended to uphold the findings of the Opposition Division relating to ‘veterinary preparations’.

33Furthermore, EUIPO maintained that, even if the implied endorsement of the Opposition Division’s decision was incorrect, that could have no bearing on the outcome of the present dispute, since the Board of Appeal found that there was no likelihood of confusion, even with regard to identical goods. According to EUIPO, it would therefore have found also that there was no likelihood of confusion with regard to ‘veterinary preparations’. It submits that the level of attention of the relevant public in respect of ‘veterinary preparations’ is relatively high.

34In that regard, it should be noted that the Board of Appeal did not carry out any examination whatsoever of ‘veterinary preparations’ and that it accordingly did not adjudicate on the relevant public’s level of attention with regard to those goods. It must moreover be noted that the Court cannot carry out an assessment on which that Board of Appeal has not yet adopted a position (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

35Although Article 65(3) of Regulation No 207/2009 enables the Court to alter the decisions of the Boards of Appeal, that possibility is, in principle, limited to situations in which the case has reached a stage appropriate for judicial adjudication. The fact that the Board of Appeal failed to rule on one of the heads of claim means that that stage had not been reached. Alteration of the contested decision would in effect imply that the Court was deciding for the first time on the substance of the pleas on which the Board of Appeal had failed to rule. Such a determination does not, however, fall within the jurisdiction of the Court as laid down in Article 65(2) and (3) of Regulation No 207/2009 (judgment of 10 June 2008, GABEL, T‑85/07, EU:T:2008:186, paragraph 28).

36It follows from all the foregoing that the contested decision must be annulled in so far as the Board of Appeal failed to adjudicate on ‘veterinary preparations’.

37In the third place, the following must be noted regarding ‘sanitary preparations for medical use’, covered by the mark applied for, against which the opposition was directed.

38The Board of Appeal considered that the opposition was directed against ‘sanitary preparations for medical purposes’ and examined those goods.

39However, it cannot be considered that the Board of Appeal failed to adjudicate on ‘sanitary preparations for medical use’. The words ‘sanitary preparations for medical purposes’ are perfect synonyms of the words ‘sanitary preparations for medical use’. The Board of Appeal therefore, on balance, examined the correct goods, even though it is unfortunate that it did not use the correct words, namely the designation of the goods which appeared in the trade mark application. Nor is the contested decision vitiated by a failure to give reasons in that regard, since the reasoning concerning ‘sanitary preparations for medical purposes’ also applies to ‘sanitary preparations for medical use’, in view of the fact that those words are perfectly synonymous.

40In the remainder of the present judgment, the words ‘sanitary preparations for medical use’ will be used in accordance with the designation of the goods covered by the mark applied for, even where the Board of Appeal and the parties referred to ‘sanitary preparations for medical purposes’.

41It follows from all the foregoing that the contested decision must be annulled in so far as the Board of Appeal failed to adjudicate on ‘veterinary preparations’. Beyond that, the partially incorrect designation, by the Board of Appeal, of the goods forming the subject matter of the appeal before it has no effect on the legality of the contested decision.

42The applicant essentially raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. The applicant claims that there is a likelihood of confusion between the marks at issue for the goods in question. In the context of that plea in law, the applicant raises objections alleging infringement of Articles 42(2), 76(1) and 75 of Regulation No 207/2009.

43It should be noted that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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.

44According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

45Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment 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 76 and the case-law cited).

1.The goods for which the earlier mark is deemed to be registered

46The applicant claims that the category of goods for which it demonstrated genuine use of the earlier mark, by virtue of Article 42(2) of Regulation No 207/2009, must be defined as ‘pharmaceutical preparations for the treatment of cancer’ and that the Board of Appeal was wrong to restrict that category to pharmaceutical preparations for the treatment of breast cancer alone.

47EUIPO disputes that argument and furthermore claims that it cannot have any bearing on the outcome of the case.

48In that regard, it should be noted that the applicant has not raised any argument seeking to dispute the finding of the Board of Appeal that, if genuine use had been demonstrated for the category of ‘pharmaceutical preparations for the treatment of cancer’, that would not have changed anything, either with regard to the outcome of the comparison of the goods or the outcome of the case.

49It must be noted that, in fact, for the purposes of comparing the goods at issue, it is irrelevant whether the earlier mark is deemed to have been registered for ‘pharmaceutical preparations for the treatment of breast cancer’, in accordance with the view of the Board of Appeal, or for ‘pharmaceutical preparations for the treatment of cancer’, in accordance with the applicant’s view (see paragraph 85 below). The applicant’s argument is therefore ineffective.

50As regards the applicant’s argument that it is important to obtain a decision on that question, which would also give guidance for the future, it must be noted that the Court is not obliged to rule on questions which are irrelevant to the outcome of the dispute on the ground that one party considers that it would be useful, for other cases, to receive clarification on those questions.

2.The relevant public and its level of attention

51According to the case-law, 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).

52In the present case, it should be noted that, having regard to the fact that the earlier mark is an EU trade mark, the relevant territory for the assessment of the likelihood of confusion is the territory of the European Union, as the Board of Appeal correctly stated, which, moreover, is not disputed by the applicant.

53The Board of Appeal was furthermore right to make the finding, which the applicant does not dispute, that the goods at issue were intended for professionals in the medical sector and for average consumers as end consumers.

54The applicant, however, disputes the Board of Appeal’s assessment of the level of attention of the relevant public.

55In the first place, the applicant submits that the contested decision is not consistent, in so far as it states, on the one hand, that the level of attention displayed by the relevant public is heightened (paragraph 34 of the contested decision) and, on the other, that that level is high. In the second place, it maintains, in the application, that the level of attention of the end-user when purchasing the goods in question is average. In the reply, the applicant concedes that it may be the case that the level of attention of the relevant public is above average. It maintains, however, that this does not mean that the consumer always displays a high level of attention.

56EUIPO submits that the Board of Appeal used the expression ‘heightened degree of attentiveness’ to mean ‘a high degree of attention’. Furthermore, it submits that the Board of Appeal was correct to find that there exists a high level of attention.

57First, as regards the alleged lack of consistency of the contested decision, it should be noted that the Board of Appeal observed, in paragraphs 33 and 45 of that decision, that the level of attention of the relevant public was ‘high’,and, in paragraph 34 of that decision, that that level was ‘heightened’.

58It should be pointed out that those words were used as synonyms by the Board of Appeal. It should be noted that, in paragraph 34 of the contested decision, the Board of Appeal referred to judgments in which the Court had found that there was a ‘heightened’ level of attention, which explains the use of that word by the Board of Appeal in that paragraph of the contested decision.

59Moreover, the use of those words as synonyms is consistent with the case-law. Thus, in the judgment of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN) (T‑331/09, EU:T:2010:520, paragraph 26), those words were used as synonyms by the Court, which noted, first, that consumers were likely to have a ‘high’ degree of attentiveness upon prescription of medicines and secondly that ‘medicines, whether or not issued on prescription, [could] be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect’. This was also the case in the judgment of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS) (T‑262/14, not published, EU:T:2015:888, paragraph 17).

60In any event, it is necessary to reject the applicant’s argument that, from a grammatical point of view, a heightened level of attention is only a comparison with a different level of attention, and that it is difficult to know whether the result of that heightened level of attention will be a high level of attention or merely a normal level of attention, compared with a low level of attention. That reasoning is based solely on a grammatical analysis of the word ‘heightened’. However, it is clear from the judgments cited in paragraph 59 above that the Court referred to a level of attention which was ‘heightened’ in comparison with an average level of attention. It is also clear from the contested decision that the Board of Appeal referred to a level of attention which was ‘heightened’ in comparison with an average level of attention, since it also noted, on two occasions (paragraphs 33 and 45 of the contested decision), the existence of a ‘high’ level of attention.

61It follows from the foregoing that the applicant’s argument alleging that the contested decision is inconsistent must be rejected.

62Next, as regards the level of attention of the relevant public, the following must be noted.

63As regards pharmaceutical goods, it is settled case-law that professionals display a high level of attention (judgments of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 29, and of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 26). The applicant does not dispute that professionals display such a level of attention.

64It is also necessary to consider that end-users display a high level of attention with regard to pharmaceutical goods (judgments of 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, not published, EU:T:2014:440, paragraph 30, and of 26 November 2015, BIONECS, T‑262/14, not published, EU:T:2015:888, paragraphs 17 and 20). That high level of attention is due to the implications of pharmaceutical goods for human health.

65The applicant claims that end-users do not display a high level of attention and submits that pharmaceutical goods may be bought via mail order, like other consumer goods, without the assistance of a healthcare professional.

66However, as the Court has already had occasion to hold, the fact that an end-user could possibly obtain on the internet a medicinal product sold without prescription, without the advice of a pharmacist or physician, is not such as to lower that consumer’s level of attention when purchasing such goods (judgment of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 28). As EUIPO maintains, the high level of attention of non-professional users of medicines is associated with the health implications of the medicines, and not with the intervention of a specialist.

67The applicant also claims that, if the consumer’s level of attention when purchasing medicines cheaply on the internet had to be considered to be heightened or high, it would also be necessary to note that the level of attention concerning foodstuffs was high, since health problems could also be caused by eating the wrong product, on account of allergies caused by specific ingredients.

68That argument cannot be upheld. It is based on the very specific situation of consumers suffering from an allergy. While it is true that consumers suffering from an allergy may display a heightened level of attention when purchasing foodstuffs, that is not the case for average consumers. The health implications relating to the choice of foodstuffs are not comparable to those relating to the choice of pharmaceutical goods.

69It must also be concluded that the relevant public has a high level of attention in respect of ‘sanitary preparations for medical use’ (judgment of 11 June 2014, METABIOMAX, T‑281/13, not published, EU:T:2014:440, paragraph 30). It should be noted that goods ‘for medical use’ have health implications for consumers, which justifies the view that their level of attention is high, in the same way as for pharmaceutical goods.

70That result is not called into question by the judgment of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS) (T‑288/08, not published, EU:T:2012:124, paragraph 36). In that judgment, the Court held that ‘the relevant public’s level of attention in respect of sanitary preparations in Class 5, without being high, [was] above average, since those preparations include[d] both goods intended for everyday use and goods intended for medical use’. By contrast, in the present case, the sanitary preparations covered by the mark applied for are expressly limited to those ‘for medical use’.

71It follows from all of the foregoing that the Board of Appeal was right to find that the relevant public has a high level of attention in respect of the goods in question.

3.The comparison of the goods

72According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

73In the present case, it is necessary to compare ‘pharmaceutical preparations for the treatment of breast cancer’, in respect of which the earlier mark is deemed to be registered, with the following goods, covered by the mark applied for following the restrictions of the list of goods made by Meda during the administrative procedure: ‘Pharmaceutical and veterinary preparations excluding blood products and preparations for the treatment of blood disorders and bleeding diseases; sanitary preparations for medical use, except for drugs for use in the cardiovascular system (all of the aforementioned products not for use in the dental field and excluding ophthalmic preparations)’.

74In the remainder of the present judgment, the restrictions to the list of goods covered by the mark applied for, namely the goods expressly excluded from the list, are no longer expressly referred to, as they have no relevance to the comparison of the goods in question.

(a)‘Pharmaceutical preparations’

75The Board of Appeal was correct in stating, and is not contradicted on this point by the applicant, that the ‘pharmaceutical preparations’ covered by the mark applied for were identical to the ‘pharmaceutical preparations for the treatment of breast cancer’, for which the earlier mark was deemed to be registered. The latter goods are included in the broader category of ‘pharmaceutical preparations’ covered by the mark applied for.

(b)‘Sanitary preparations for medical use’

76The Board of Appeal found that the ‘sanitary preparations for medical use’ covered by the mark applied for and ‘pharmaceutical preparations for the treatment of breast cancer’, for which the earlier mark was deemed to be registered, were similar to a low degree. It noted that ‘sanitary preparations for medical use’ included various goods which are used for sterilising and disinfecting in hospitals and clinics and that they were, inter alia, intended for use in medical treatments or in surgical operations. According to the Board of Appeal, they, together with pharmaceutical preparations, belonged to the same category of goods for healthcare, they could be manufactured by the same economic operators, namely pharmaceutical companies, and they were sold in the same establishments. In support of its analysis, the Board of Appeal cited the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124, paragraph 44).

77The applicant claims that it is apparent from the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124, paragraph 44) that ‘pharmaceutical preparations’ and ‘sanitary preparations for medical use’ are very similar, and not similar to a low degree, as the Board of Appeal considered.

78In this regard, it should be noted that in the judgment of 15 March 2012, ZYDUS

(T‑288/08, not published, EU:T:2012:124), the Court compared ‘sanitary preparations’ in Class 5 and ‘pharmaceutical preparations’. After noting that Class 5 within the meaning of the Nice Agreement included, inter alia, sanitary preparations for medical purposes and for personal hygiene, but did not include sanitary preparations for personal hygiene which are toiletries, which are covered instead by Class 3, the Court held that there was a ‘relatively high’ degree of similarity between ‘sanitary preparations’, as thus defined, and ‘pharmaceutical preparations’ (paragraph 44 of that judgment). In support of that finding, the Court based its view on the following elements characterising those goods (paragraph 44 of that judgment):

–they are aimed at the same public, namely healthcare professionals and end consumers;

–they have the same intended purpose, being intended, inter alia, for use in medical treatment or in a surgical operation;

–they are also of the same nature, given that they are perceived by consumers as goods belonging to the same general category of healthcare products;

–they are closely complementary, in so far as certain sanitary preparations for medical purposes, such as antiseptics or antibacterial lotions, may prove to be indispensable when certain pharmaceutical preparations are administered;

–they may be manufactured by the same economic operators (pharmaceutical companies) and are sold in the same establishments, that is to say, mainly pharmacies but also, sometimes, supermarkets.

79EUIPO maintains that the finding of the Board of Appeal that the degree of similarity is low is not contrary to the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124). According to EUIPO, the Court’s finding in that judgment cannot be interpreted as meaning that all ‘pharmaceutical preparations’ are highly similar to ‘sanitary preparations for medical use’, but merely that some of them are. Other goods, such as ‘pharmaceutical preparations for the treatment of breast cancer’, are not highly similar to ‘sanitary preparations for medical use’. In that regard, EUIPO maintains that the finding of complementarity in the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124) is not valid with regard to ‘pharmaceutical preparations for the treatment of breast cancer’, for which the earlier mark is deemed to be registered, which are 2.5 mg film-coated tablets to be taken orally.

80However, as the applicant maintains, the goods for which the earlier mark is deemed to be registered are not restricted to goods taken orally in the form of film-coated tablets. The applicant is correct in claiming that ‘pharmaceutical preparations for the treatment of (breast) cancer’ can also be administered intravenously. The Court’s finding in the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124, paragraph 44) that certain sanitary preparations for medical use, such as antiseptics or antibacterial lotions, may prove to be indispensable when certain pharmaceutical preparations are administered is entirely valid concerning ‘pharmaceutical preparations for the treatment of breast cancer’ administered intravenously. Those goods are therefore complementary.

81The findings in paragraph 44 of the judgment of 15 March 2012, ZYDUS (T‑288/08, not published, EU:T:2012:124), as summarised in paragraph 78 above, are valid in so far as concerns the comparison of ‘sanitary preparations for medical use’ with ‘pharmaceutical preparations for the treatment of breast cancer’.

82Moreover, in the judgment of 11 June 2014, METABIOMAX (T‑281/13, not published, EU:T:2014:440, paragraph 37), the Court also held that there was a ‘relatively high’ degree of similarity between ‘sanitary preparations for medical purposes’ and ‘medicines’.

83Finally, it should be noted that the Board of Appeal listed several factors which indicate similarity between ‘sanitary preparations for medical use’ and ‘pharmaceutical preparations for the treatment of breast cancer’, and that it did not in any way support its finding that the degree of similarity had to be classified as ‘low’.

84It follows from the foregoing that the Board of Appeal erred in classifying the degree of similarity between ‘sanitary preparations for medical use’ and ‘pharmaceutical preparations for the treatment of breast cancer’ as low. The degree of similarity between those goods must be regarded as ‘relatively high’.

85It should be noted that the findings relating to the comparison of the goods, in paragraphs 75 to 84 above, would be the same if it were held that the earlier mark was deemed to be registered for ‘pharmaceutical preparations for the treatment of cancer’ in general.

4.The comparison of the signs

86The 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 marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. 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).

(a)Visual similarity

87The Board of Appeal noted that, visually, the marks differed in terms of their first two letters (‘z’ and ‘i’, on the one hand, and ‘f’ and ‘e’, on the other) and coincided in their ending (‘mara’). It noted that, since consumers tend to pay greater attention to the beginning of a mark than to the end, and since the element ‘mara’ was unlikely to be singled out from the marks as a whole, the coincidence in these letters was not immediately perceivable. It concluded that the visual similarity between the marks at issue was very low.

88The applicant submits that the Board of Appeal put too much weight on the beginning of the words in the context of the visual comparison. According to the applicant, the marks at issue have an average degree of visual similarity or are visually similar ‘at least to an average degree’.

89According to the case-law, the initial part of a word mark is likely to retain the consumer’s attention more than the parts that follow (see, to that effect, judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81 and of 16 March 2005, L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraphs 64 and 65). Admittedly, that consideration cannot apply in all cases and it cannot, in any event, undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details (judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 58).

90In the present case, the applicant has not put forward any argument to support the view that, as regards the marks at issue, the public does not attach more importance to the initial part of those marks than to their ends.

91It is true that, as the applicant maintains, in the judgment of 9 April 2014, OCTASA (T‑501/12, not published, EU:T:2014:194, paragraphs 59 and 60), the Court held that the differences between the first parts of the signs PENTASA and OCTASA, despite their position at the beginning of the marks, were incapable of negating a certain degree of visual and phonetic similarity in the overall impression given by those signs and that the Board of Appeal was therefore wrong to state that there was no visual or phonetic similarity between those signs.

92However, in the present case, the Board of Appeal did not consider that there was no similarity between the marks at issue, but on the contrary held that there was visual and phonetic similarity, albeit a very low degree of visual similarity and a low degree of phonetic similarity.

93It should be noted that, in the present case, the first syllables of the marks at issue, namely ‘zi’ and ‘fe’, are visually very different and have no letters in common. The second and third syllables, namely ‘ma’ and ‘ra’, are identical.

94In view of the fact that the public generally pays greater attention to the beginning of a mark than to its end, it must be noted that the degree of visual similarity between the signs at issue must be considered low. However, since the second and third syllables of the marks at issue are the same, that visual similarity cannot be considered, as it was by the Board of Appeal, to be ‘very low’.

95The finding of a low degree of visual similarity between the marks at issue is not called into question by the applicant’s arguments.

96The applicant maintains that in the judgments of 1 July 2014, Jyoti Ceramic Industries v OHIM — DeguDent (ZIECON) (T‑239/12, not published, EU:T:2014:592); of 24 September 2014, Sanofi v OHIM — GP Pharm (GEPRAL) (T‑493/12, not published, EU:T:2014:807); and of 2 December 2014, Boehringer Ingelheim Pharma v OHIM — Nepentes Pharma (Momarid) (T‑75/13, not published, EU:T:2014:1017), the Court held that there was visual similarity between the signs CERCON and ZIERCON (figurative), DELPRAL and GEPRAL and Momarid and LONARID, even though the differences between those signs were to be found at the beginning of them.

97In that regard, it should be noted that the comparison between two signs must be carried out according to the particular circumstances of each case, with the result that a comparison with the specific degree of similarity found to exist between other signs in other cases is of only limited value (judgments of 3 June 2015, Giovanni Cosmetics v OHIM — Vasconcelos & Gonçalves (GIOVANNI GALLI), T‑559/13, not published, EU:T:2015:353, paragraph 83, and of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, not published, EU:T:2016:69, paragraph 158). Moreover, in all the cases referred to in paragraph 96 above, the first syllables of the marks at issue had one letter in common. In the judgment of 24 September 2014, GEPRAL (T‑493/12, not published, EU:T:2014:807, paragraph 30), the Court also held that ‘the difference between the respective upper case first letters, “D” and “G”, the contour and shape of which [were] visually similar, [was] not significant’. In the present case, the contour and shape of the first letters of the marks at issue are very different.

98As regards the Board of Appeal’s finding that, in so far as the element ‘mara’ is unlikely to be singled out from the marks as a whole, the coincidence in those letters is not immediately perceivable, the applicant claims that the Board of Appeal misapplied the principle that, when a mark consists of several elements, an element that is singled out from the whole has an independent distinctive position within the composite sign. The applicant submits that, for the assessment of the visual similarity, the identical part need not be singled out from the whole.

99However, this argument of the applicant is based on a misreading of the second sentence of paragraph 43 of the contested decision, which is worded as follows: ‘As consumers tend to pay greater attention to the beginning of a mark than to the end ... and “-MARA” is unlikely to be singled out from the marks as a whole, the coincidence in these letters is not immediately perceivable. ’

100Contrary to what the applicant claims, the Board of Appeal did not take the view that it was necessary for the identical part to be singled out from the marks at issue as a whole, in order for those marks to be considered similar. The Board of Appeal concluded that there was visual similarity, albeit to a very low degree, between the marks at issue, although it noted that the common element ‘mara’ was not singled out from the marks as a whole. The Board of Appeal essentially took the view that partial identity between two marks was less visible where it concerned a part of the marks which was not singled out from those marks as a whole.

101In any event, the existence of a merely low degree of similarity between the marks at issue may be established even disregarding that additional point raised by the Board of Appeal.

(b)Phonetic similarity

102The Board of Appeal noted, in paragraph 44 of the contested decision, that the marks were pronounced ‘zi-ma-ra’ and ‘fe-ma-ra’ in accordance with the pronunciation rules of the respective languages. It noted that, while it is true that, in English, the letter ‘i’ and the letter ‘e’ were sometimes pronounced in a similar way, that was not, however, so in the present case. The Board of Appeal noted that the letter ‘i’ in ‘ZIMARA’ was pronounced like the ‘I’ in ‘zip’ and the ‘E’ in ‘FEMARA’ like the ‘e’ in ‘lemon’. The Board of Appeal concluded that the phonetic similarity was low.

103The applicant submits that, in the present case, the initial vowels of the marks at issue will be pronounced by an English-speaking public in the same way, as an ‘i’.

104EUIPO maintains that the Board of Appeal correctly identified the pronunciation of the marks at issue.

105It should be noted, first, that the public to be taken into consideration is that of the entire European Union, since the earlier mark is an EU trade mark.

106The applicant maintains that all languages of the European Union must be taken into account when assessing the phonetic similarity of the signs. The specific arguments raised by the applicant in order to demonstrate a high degree of phonetic similarity concern, however, the English-speaking part of the relevant public. As regards the non-English-speaking part of the relevant public, the applicant did not put forward any argument capable of calling into question the Board of Appeal’s assessment that the degree of phonetic similarity was low (see, for more details, paragraph 158 below).

107It is therefore particularly in relation to the perception of the English-speaking public that the phonetic similarity of the marks at issue should be examined.

(1)The pronunciation of the mark applied for

108As regards the pronunciation of the mark applied for, it should be noted that the Board of Appeal found that ‘the “i” in “ZIMARA” [was] pronounced as the “I” in “zip”’. It should be noted that the letter ‘i’ in the English word ‘zip’ is pronounced like the sound [ɪ] in the international phonetic alphabet published by the International Phonetic Association.

109It is necessary to uphold the finding of the Board of Appeal, which, moreover, is not disputed by the parties, that the first letter of the mark applied for will be pronounced like the sound [ɪ] in the international phonetic alphabet.

110As regards the pronunciation of the first letter of the mark Zimara, the applicant claims that it will be pronounced like the letter ‘s’.

111In that regard, it should be noted that, in English, the letters ‘z’ and ‘s’ are not pronounced in the same way. The letter ‘z’ is a voiced consonant, while the letter ‘s’ is an unvoiced consonant. As EUIPO maintains, in English, the words ‘zip’ and ‘sip’ are not pronounced in the same way.

(2)The pronunciation of the earlier mark

112The applicant puts forward several arguments in order to challenge the Board of Appeal’s assessment that the English-speaking public would pronounce the letter ‘e’ of the mark FEMARA like the letter ‘e’ in the English word ‘lemon’ (that is to say like the [e] sound in the international phonetic alphabet).

113In the first place, the applicant claims that the Board of Appeal infringed Article 76(1) of Regulation No 207/2009, which provides that, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. In that regard, it maintains that Meda did not, during the administrative procedure, challenge the applicant’s argument relating to the pronunciation of the letter ‘e’ in the mark FEMARA. The applicant submits that, when the pronunciation of a particular vowel is not disputed, EUIPO may not adopt a different pronunciation rule out of the blue and that the Board of Appeal ‘cannot interfere for the benefit of one of the parties by adapting their own facts’.

This argument must be rejected. The question of the pronunciation of a word in an EU language is a question of well-known facts. Restricting the factual basis of the examination by EUIPO does not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see judgments of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 67 and the case-law cited, and of 19 June 2014, Kampol v OHIM — Colmol (Nobel), T‑382/12, not published, EU:T:2014:563, paragraph 57 and the case-law cited).

116Furthermore, when a party to opposition proceedings relies on an allegedly well-known fact, such as in the present case the pronunciation of the letter ‘e’ in the earlier mark as an ‘i’, and the other party does not challenge it, that does not mean that the Board of Appeal must regard this as an established fact. It should be noted that the rules of pronunciation of EU languages are not subject to the discretion of the parties and that it is for the Board of Appeal to make its own assessment of the pronunciation of the marks at issue. In that regard, it must be stated that Article 76(1), in fine, of Regulation No 207/2009 cannot have the purpose of compelling the Opposition Division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 32).

117Moreover, in accordance with Rule 20(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, if the trade mark applicant submits no observations on the opposition, EUIPO is to base its ruling on that opposition on the evidence before it. A trade mark applicant therefore has a right, but not an obligation to submit observations and, if he does not submit any, the consequence is not that EUIPO must base its ruling exclusively on the facts as alleged by the opponent, but that it is to base its ruling on the evidence before it. EUIPO cannot therefore be required to base its rulings on facts alleged by the opponent, where they are contrary to well-known facts, even if they have not been disputed by the other party.

118As regards well-known facts, the Board of Appeal is not therefore bound by the arguments of the parties, contrary to what the applicant claims.

119The applicant also submits that Meda has not adduced any evidence concerning the way in which the earlier mark is pronounced. In that regard, it should be noted that facts which are well known may be taken into consideration by the Board of Appeal even if they have not been explicitly put forward by the parties to the opposition proceedings. A fortiori, parties to opposition proceedings are not required to prove facts which are well known (judgment of 19 June 2014, Nobel, T‑382/12, not published, EU:T:2014:563, paragraph 57).

120As regards the applicant’s claim that, when the pronunciation of a particular vowel is not disputed, the Board of Appeal cannot adopt a different pronunciation rule ‘out of the blue’, it should be noted that, if the applicant’s assertion were to be interpreted as a claim of infringement of the second sentence of Article 75 of Regulation No 207/2009, that argument would, in any event, have to be rejected.

121Under the second sentence of Article 75 of Regulation No 207/2009, EUIPO’s decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In the present case, there is no doubt that the applicant did indeed have an opportunity to present its comments on the pronunciation of the earlier mark, which, moreover, is something that it did. The right to be heard extends to all the matters of fact or of law which form the basis for the decision-making act, but not to the final position which the administration intends to adopt (see judgment of 13 April 2011, Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑262/09, EU:T:2011:171, paragraph 80 and the case-law cited). An applicant may not validly claim a right to be heard in respect of each well-known fact on which the Board of Appeal relies in its statement of reasons (judgment of 1 June 2016, Wolf Oil v EUIPO — SCT Lubricants (CHEMPIOIL), T‑34/15, not published, EU:T:2016:330, paragraph 83).

122In the second place, the applicant maintains that EUIPO did not satisfy the requirements to give reasons. It claims that, even if EUIPO was not bound by the uncontested pronunciation of the mark FEMARA, the Board of Appeal ought to have set out the reasons why the letter ‘e’ in that mark should be pronounced like the ‘e’ in the word ‘lemon’. It maintains that the Board of Appeal did not give any reasons why, in its view, the first vowel of the word ‘femara’ and the first vowel of the word ‘lemon’ would be pronounced in the same way.

123In this regard, it must be recalled that, in accordance with Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. The purpose of that duty is twofold: first, to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and, secondly, to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgment of 19 May 2010, Zeta Europe v OHIM (Superleggera), T‑464/08, not published, EU:T:2010:212, paragraph 47; see also, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65). However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them (see judgment of 28 November 2013, Herbacin cosmetic v OHIM — Laboratoire Garnier (HERBA SHINE), T‑34/12, not published, EU:T:2013:618, paragraph 42 and the case-law cited).

124As regards well-known facts, it is settled case-law that the bodies of EUIPO are not obliged to establish in their decisions the accuracy of such facts (see judgment of 1 March 2016, Peri v OHIM (Multiprop), T‑538/14, not published, EU:T:2016:117, paragraph 14 and the case-law cited). The Board of Appeal was accordingly not obliged to establish the accuracy of its finding concerning the pronunciation of the letter ‘e’ in the earlier mark, which means that it was not under an obligation to explain how it arrived at that finding.

125The applicant’s argument alleging that the reasoning given in the contested decision was inadequate must therefore be rejected.

126In the third place, the applicant maintains that where EUIPO has accepted that two letters are pronounced in a similar or identical way, then this is a matter of fact which cannot be called into question in the subsequent decision.

127In making this claim, the applicant, in essence, maintains that, where the Opposition Division has found that a letter was pronounced in a certain way, the Board of Appeal may not depart from that assessment.

128In the present case, the Opposition Division had taken the view that, in certain languages, such as, for example, English. the letters ‘e’ and ‘i’ were pronounced almost identically, like an ‘i’. The applicant, in essence, claims that the Board of Appeal was not entitled to depart from that assessment in the absence of evidence from Meda that the rules of pronunciation had changed since that time.

129The applicant’s argument must be rejected. It should be noted that, under Article 62(1) of Regulation No 207/2009, by virtue of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162 paragraph 57).

130Moreover, it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of any previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).

131The Board of Appeal was therefore not bound by the findings of the Opposition Division with regard to the pronunciation of the initial vowels of the marks at issue.

132In the fourth place, the applicant submits that the Board of Appeal’s assessment in respect of the pronunciation, by an English-speaking public, of the first vowel in the mark FEMARA is incorrect. It maintains that it submitted several examples of English words in which the letter ‘e’ is pronounced as an ‘i’. The applicant claims that it is very likely that the earlier mark will be pronounced ‘fi-ma-ra’.

133In that regard, EUIPO maintains that it would be counter-intuitive for a native English speaker to pronounce the first syllable of the mark FEMARA like the first two letters of the English words ‘feline’ or ‘female’, that is to say [fiː] in accordance with the international phonetic alphabet. An EU English speaker would pronounce the first syllable of the mark FEMARA like the first two letters of the English word ‘feminine’, that is to say [fe] in accordance with the international phonetic alphabet.

134EUIPO has produced, in Annex B1 to the response, a list of words starting with the letter combination ‘fe’, taken from the Pocket Oxford Dictionary, 1996 edition. It maintains that it is clear that the ‘e’ in the letter combination ‘fe’, when placed before a consonant, is pronounced in the great majority of cases like the ‘e’ in the English word ‘lemon’. Furthermore, it submits that, out of approximately 100 entries where the letter combination ‘fe’ is followed by a consonant, it is pronounced [fiː] only in six cases, namely ‘feline’, ‘female’, ‘femur’, ‘fever’, ‘feverfew’ and ‘feverish’.

135In that regard, the applicant claims that Annex B1 is illegible and accordingly inadmissible.

136That argument must be rejected. Annex B1 is indeed legible. As EUIPO points out, if the applicant had received an illegible document, it should have contacted the Court in order to resolve that problem.

137It must also be noted that it follows from the case-law that EUIPO may submit documents to the Court in order to demonstrate the accuracy of a well-known fact, even if it was not established in the EUIPO decision contested before the Court (see judgment of 1 March 2016, Multiprop, T‑538/14, not published, EU:T:2016:117, paragraph 14 and the case-law cited).

138It should be noted that the pronunciation [fe] of the first syllable of the mark FEMARA (in accordance with the international phonetic alphabet), that is to say like the first two letters of the English word ‘feminine’, is the most natural for an English speaker, as confirmed by Annex B1. As EUIPO maintains, it is apparent from that annex that, out of 100 entries in which the letter combination ‘fe’ is followed by a consonant, it is pronounced [fiː] in six cases only.

139The applicant’s argument that the vowel ‘e’ in the letter combination ‘fe’ is pronounced as an ‘e’ if the letter combination is followed by at least two consonants and that the vowel ‘e’ in that letter combination is pronounced, by contrast, as an ‘i’ if it is followed by a single consonant, as in the words ‘female’, ‘fever’ or ‘femur’, must be rejected. EUIPO rightly referred to the following examples, in which the letter ‘e’ is not pronounced as an ‘i’: ‘fecund’, ‘federal’, ‘felicity’, ‘felon’, ‘feral’, ‘fetid’, ‘fetish’. The word ‘feminine’ is a further example. The pronunciation rule invoked by the applicant therefore does not exist.

140The applicant claims furthermore that, for the purposes of assessing the similarity of signs, it is sufficient to note that it cannot be ruled out that the pronunciation ‘fi-ma-ra’ is the correct pronunciation. It maintains that it is not unlikely that the mark FEMARA will be pronounced ‘fi-ma-ra’ in so far as a consumer might consider that there is a connection with the word ‘female’, which is pronounced ‘fi-male’. As long as there is a ‘reasonable risk’ that the mark FEMARA will be pronounced ‘fi-ma-ra’, it submits, EUIPO must take into consideration that pronunciation regardless of whether different pronunciations exist.

141In that regard, it should be noted that, where there are several significant groups of consumers who pronounce a mark differently, it is sufficient that there is a likelihood of confusion for one of those significant groups (see, to that effect, concerning the interpretation of a figurative mark as representing a specific letter, judgment of 10 November 2011, Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, not published, EU:T:2011:651, paragraphs 118 and 119).

142It is therefore necessary to examine whether a significant part of the English-speaking public will pronounce the first vowel of the mark FEMARA in the same way as the first vowel of the English word ‘female’.

143In that regard, it must be recalled that the most natural pronunciation of the first syllable of the mark FEMARA corresponds to the sound [fe] in the international phonetic alphabet.

144The applicant claims however that is not unlikely that the mark FEMARA is pronounced ‘fi-ma-ra’ in so far as an English-speaking consumer might consider there to be a link with the English word ‘female’ and that the element ‘fem’ refers to the fact that the product is aimed at women.

145It must, however, be noted that, even if part of the English-speaking public would understand the beginning of the earlier mark as being a reference to the fact that the product sold under that mark is aimed at women, there is no reason to consider that that part of the relevant public will pronounce the first syllable of the mark FEMARA in the same way as the first two letters of the English word ‘female’. Contrary to what the applicant claims — in maintaining that a consumer who understands the beginning of the earlier mark as a reference to the fact that the product sold under that mark is aimed at women will also pronounce it in the same way as ‘the’ word referring to women, namely the word ‘female’ — there is no single word which refers to women in English.

146In English, the first two letters of the word ‘feminine’ are pronounced [fe], in accordance with the international phonetic alphabet. The first two letters of the English words ‘femininity’, ‘feminism, ‘feminize’ and ‘Fem Lib’, which all refer to women, are also pronounced [fe], in accordance with the international phonetic alphabet.

147The mere fact that part of the relevant public might understand the beginning of the earlier mark as being a reference to the fact that the product sold under that mark is aimed at women would therefore, if proved, not be sufficient for the view to be taken that a significant part of the English-speaking public would pronounce the first syllable of the earlier mark as [fiː]. Given that, among English words referring to women which contain the element ‘fe’, that element is, in the vast majority of cases, pronounced [fe], in accordance with the international phonetic alphabet, there is no reason for an English speaker to pronounce the first two letters of the earlier mark differently.

148It follows from the foregoing that the Board of Appeal was right to find that the first vowel of the earlier mark will be pronounced like the letter ‘e’ in the English word ‘lemon’.

(3)The phonetic comparison of the marks at issue

149It should be noted that the second and third syllables of the marks at issue, namely ‘ma’ and ‘ra’, coincide. The English-speaking part of the relevant public will pronounce those two syllables in the same way in both marks.

150The applicant claims that the pronunciation of the first letter of the mark applied for and that of the first letter of the earlier mark are similar and that the pronunciation of the first vowel of the mark applied for and that of the first vowel of the earlier mark are identical, a claim which EUIPO disputes.

151It should be noted that the applicant submits that the first letter of the mark applied for is pronounced as an ‘s’ (see paragraph 110 above).

151The applicant maintains that the letter ‘s’ — as in the English word ‘sip’ — is a voiceless sibilant, sibilants being a subset of fricatives. The letter ‘f’ as in the English word ‘fine’, is a voiceless labiodental fricative. The applicant submits that, since both letters are fricatives, they are pronounced in a very similar way.

152That argument cannot be upheld. It should be noted that the first letter of the earlier mark will be pronounced not like the letter ‘s’ in the English word ‘sip’, but like the letter ‘z’ in the English word ‘zip’ (see paragraph 111 above). It is a voiced consonant, whereas the letter ‘f’ is an unvoiced consonant.

153It is true that the letters ‘z’ and ‘f’ belong to the group of fricatives. That fact alone is not however sufficient for the view to be taken that they are pronounced in a similar way. On the contrary, the pronunciation of the letter ‘z’ is very different from the pronunciation of the letter ‘f’, since ‘z’ is a sibilant.

154It follows from the foregoing that the pronunciation of the initial letter of the mark applied for is very different from that of the initial letter of the earlier mark.

155As regards the pronunciation of the initial vowels, that is to say the second letters, of the marks at issue, it should be noted that the sound [ɪ] of the international phonetic alphabet, which corresponds to the pronunciation of the first vowel of the mark applied for, is clearly distinct from the sound [e], which corresponds to the pronunciation of the first vowel of the earlier mark.

156It must therefore be held that the pronunciation of the first syllable of the mark applied for and that of the first syllable of the earlier mark, which are likely to attract the relevant consumer’s attention to a greater extent, are very different. In that context, it must be stressed that a sibilant is very clearly distinguished from other consonants. As regards hushing sibilants, the Court noted, in the judgment of 25 November 2010, Vidieffe v OHIM — Ellis International Group (GOTHA) (T‑169/09, not published, EU:T:2010:484, paragraph 42), concerning the phonetic comparison of the marks GOTHA and gotcha, that the presence of the letter ‘c’ in the mark gotcha had the effect of transforming the ‘th’ sound into a hushing sound and that, accordingly, the words ‘gotha’ and ‘gotcha’ were pronounced differently.

157Under those circumstances, it should be considered that the degree of phonetic similarity between the marks at issue is low for the English-speaking section of the relevant public.

158In so far as concerns the non-English-speaking part of the relevant public, it is also necessary to take the view that the degree of phonetic similarity of the marks at issue is low. For that part of the relevant public, the initial syllables of the marks at issue are also pronounced very differently. The applicant has not put forward any argument capable of allowing the view that, in a language other than English, the pronunciation of the syllable ‘fe’ and that of the syllable ‘zi’ are similar. The applicant did not identify any language other than English, in which, in its view, the letter ‘e’ of the mark FEMARA would be pronounced as an ‘i’.

159The Board of Appeal was therefore right to conclude that there was a low degree of phonetic similarity between the marks at issue.

160(c) Conceptual similarity

160The Board of Appeal found that neither of the marks at issue had any meaning in the relevant territory.

161The parties expressly agree with that finding.

162It is necessary to uphold the Board of Appeal’s finding that neither of the marks at issue has any meaning in the relevant territory. This means that a conceptual comparison between the marks at issue is not possible.

163It should, however, be pointed out that the applicant’s reasoning is not consistent in so far as it claims, first, that part of the relevant public will recognise the first part of the earlier mark as a reference to the fact that the product sold under that mark is aimed at women, and, secondly, that neither of the marks at issue has any meaning in the relevant territory.

164A 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, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

165In the context of a global assessment of the likelihood of confusion, the Board of Appeal noted that the goods in question were identical or similar and that the marks were similar to a low degree. It considered that, given that the difference lay at the beginning of the marks at issue and that the relevant public was likely to display a high level of attention with regard to the goods in question, there was no likelihood of confusion in the present case.

166The applicant submits that there is a likelihood of confusion in the present case. It claims in particular that the phonetic comparison is more important than the visual comparison.

167EUIPO contests the applicant’s arguments.

168It should be recalled that, in the present case, the goods in question are partly identical and display in part a relatively high degree of similarity (see paragraphs 75 and 84 above). Furthermore, it should be noted that the degree of visual similarity and the degree of phonetic similarity of the marks at issue are low (see paragraphs 94 and 159 above) and that a conceptual comparison is not possible (see paragraph 162 above).

169In that context, it should be noted that the applicant’s argument that the phonetic comparison is more important than the visual comparison is ineffective, since the marks at issue are visually and phonetically similar to the same degree.

170It should also be recalled that, for all the goods at issue, the relevant public has a high level of attention (see paragraph 71 above).

171In the light of the fact that the level of attention of the relevant public is high and that the degree of visual similarity and phonetic similarity is merely weak, it must be concluded that there is no likelihood of confusion between the marks at issue, even in respect of identical goods.

172The Board of Appeal was therefore right to conclude that there was no likelihood of confusion between the marks at issue for the goods in question.

173The errors committed by the Board of Appeal, first, in classifying the degree of visual similarity between the signs at issue as very low rather than as low (see paragraph 94 above) and, secondly, in classifying as low the degree of similarity between ‘sanitary preparations for medical use’ and ‘pharmaceutical preparations for the treatment of breast cancer’ (see paragraph 84 above), cannot result in the annulment of the contested decision, since they had no influence on the outcome (see, to that effect, judgment of 15 January 2003, Mystery Drinks v OHIM — Karlsberg Brauerei (MYSTERY), T‑99/01, EU:T:2003:7, paragraph 36).

174The single plea in law put forward by the applicant must therefore be rejected.

175It follows from all the foregoing that the contested decision must be annulled in so far as the Board of Appeal failed to adjudicate on ‘veterinary preparations’, and that the remainder of the action must be dismissed.

176Under Article 134(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

177Each party must therefore be ordered to bear its own costs.

On those grounds,

hereby:

1.Annuls the Decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 March 2015 (Case R 636/2014-5) in so far as the Board of Appeal failed to rule on the appeal before it as regards ‘veterinary preparations’;

2.Dismisses the remainder of the action;

3.Orders each party to bear its own costs.

Gratsias

Dittrich

Xuereb

Delivered in open court in Luxembourg on 21 September 2017.

Registrar

President

*

Language of the case: English.