16 June 2020 (*)

(EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark HOSPITAL DA LUZ LEARNING HEALTH — Earlier national figurative mark clínica LALUZ — Relative ground for refusal — Article 8(1)(b) of Regulation (EU) 2017/1001 — Action manifestly lacking any foundation in law)

In Case T‑558/19,

Luz Saúde, SA,

established in Lisbon (Portugal), represented by G. Moreira Rato, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by J. Ivanauskas, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Clínica La Luz, SL,

established in Madrid (Spain), represented by I. Temiño Ceniceros, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 1 July 2019 (Case R 2239/2018‑4), relating to opposition proceedings between Clínica La Luz and Luz Saúde,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins (Rapporteur), President, Z. Csehi and G. Steinfatt, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 August 2019,

having regard to the response of EUIPO lodged at the Court Registry on 19 December 2019,

having regard to the response of the intervener lodged at the Court Registry on 19 December 2019,

makes the following

Background to the dispute

On 6 March 2017, the applicant, Luz Saúde, SA, 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), 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)).

Registration as a mark was sought for the following figurative sign:

The services in respect of which registration was sought are, inter alia, in Classes 42 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–Class 42: ‘Scientific analysis; Scientific research for medical purposes; Consultancy in the fields of biotechnology, pharmaceutical research and development, laboratory testing and pharmacogenetics; Research, testing and analysis’;

–Class 44: ‘Medical assistance; Therapeutic assistance and medical care; Medical consultancy; Health counselling; Medical, medicinal and therapeutic consultancy; Hospitals; Medical and health clinics; Medical analysis services relating to the treatment of human beings, by means of a medical laboratory; Medical clinic services; Medical services; Medical care; Medical care and analysis services relating to patient treatment; Medical and surgical diagnosis; Medical diagnostic services; Medical examinations; Medical testing services relating to the diagnosis and treatment of disease; Telemedicine services; Medical treatment services provided by clinics and hospitals’.

On 14 June 2017, the intervener, Clínica La Luz, SL, filed a notice of opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

The opposition was based, inter alia, on Spanish registration No 2490337 of the following figurative mark registered on 5 March 2003 for ‘Medical services, in particular services of a medical-surgical hospital’ in Class 44:

The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001).

By decision of 21 September 2018, the Opposition Division upheld in part the opposition pursuant to Article 8(1)(b) of Regulation No 207/2009 and, accordingly, rejected the application for registration of the mark applied for in respect of the services listed in paragraph 3 above.

On 16 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division in so far as it was adversely affected by it.

By decision of 1 July 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

In the first place, the Board of Appeal, in paragraph 12 of the contested decision, considered that, since the opposition was based on an earlier Spanish mark, the relevant territory for the purpose of assessing the likelihood of confusion was Spain.

In the second place, the Board of Appeal, in paragraph 14 of the contested decision, found that, since the services at issue in Classes 42 and 44 were health-related, the degree of attention of the relevant public was high.

In the third place, the Board of Appeal, in paragraph 20 of the contested decision, considered that the services covered by the mark applied for in Class 42 and those covered by the earlier mark were similar to an average degree. In paragraph 21 of the contested decision, the Board of Appeal found that, first, the ‘medical services’ in Class 44 covered by the mark applied for were identical to the ‘medical services’ covered by the earlier mark and, secondly, the remaining services in that class covered by the mark applied for were included in the broader category of ‘medical services, in particular services of a medical-surgical hospital’ covered by the earlier mark; it found, accordingly, that all of those services were identical.

In the fourth place, the Board of Appeal, in paragraphs 36 to 43 of the contested decision, considered that, visually, the signs at issue were similar only to a low degree; aurally, they were similar to a below-average to average degree; and, conceptually, they were similar.

In the fifth place, the Board of Appeal, in paragraphs 49 and 50 of the contested decision, in its global assessment, stated that it cannot be excluded that even a public with a high level of attention may be led to believe that the research, testing, analysis, consultancy and healthcare services at issue come from the same undertaking or economically linked undertakings. Therefore, the Board of Appeal confirmed the decision of the Opposition Division with regard to the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and did not examine the plea relating to Article 8(4) thereof.

Forms of order sought

The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO to pay the costs.

EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs.

The intervener contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs, including those incurred before the Board of Appeal.

Law

Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

In the present case, the Court considers that it has sufficient information from the material in the file and decides, pursuant to Article 126 of its Rules of Procedure, to rule without taking further steps in the proceedings, notwithstanding that the applicant and the intervener have requested a hearing (see, to that effect and by analogy, order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).

The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. The applicant claims, in essence, that there is no likelihood of confusion between the marks at issue.

EUIPO and the intervener dispute the applicant’s arguments.

It should be noted that most of the applicant’s arguments raised in the present action are identical to those that were rejected as unfounded in the dispute that gave rise to the judgment of 13 June 2019, Luz Saúde v EUIPO — Clínica La Luz (HOSPITAL DA LUZ) (T‑357/18, not published, EU:T:2019:416). That judgment became final following the order of 5 November 2019, Luz Saúde v EUIPO (C‑622/19 P, not published, EU:C:2019:925), whereby the Court of Justice decided not to allow the applicant’s appeal to proceed.

It should be observed that, in so far as (i) the earlier mark in the present case is identical to that cited in opposition in the case that gave rise to the judgment of 13 June 2019, HOSPITAL DA LUZ (T‑357/18, not published, EU:T:2019:416), and the marks applied for are similar; (ii) the grounds of the contested decision are similar to those of the decision of the Fourth Board of Appeal in that case; and (iii) the applicant’s arguments put forward in the present case are identical to those put forward in the case that gave rise to the judgment of 13 June 2019, HOSPITAL DA LUZ (T‑357/18, not published, EU:T:2019:416), as summarised in paragraphs 25, 30, 36, 37, 44, 46, 49, 51 to 53, 55, 57, 59, 62 and 64 of that judgment, it is necessary to reject them as unfounded for reasons similar to those set out therein.

It is appropriate to reject also the applicant’s remaining arguments, that is to say, those which the applicant did not raise in the case that gave rise to the judgment of 13 June 2019, HOSPITAL DA LUZ (T‑357/18, not published, EU:T:2019:416).

In the first place, the applicant asserts, in the context of its argument concerning the comparison of the signs at issue with regard to their colour, set out in paragraphs 45 to 49 of the judgment of 13 June 2019, HOSPITAL DA LUZ (T‑357/18, not published, EU:T:2019:416), that the element ‘learning health’ of the mark applied for stands out and overshadows the other word elements.

It should be noted that the Board of Appeal rightly considered that (i) the element ‘learning health’ is visually co-dominant but that, for the part of the relevant public that has a command of English, it is weak and non-distinctive in respect of the services at issue and (ii) even for the part of the relevant public for which that element has no meaning, the element ‘luz’ plays an independent distinctive role and would be perceived as the name of the hospital at issue, despite the fact that it is smaller than the element ‘learning health’ (see paragraphs 30 and 31 of the contested decision).

In the second place, the applicant submits, in the context of its argument concerning the comparison of the word elements of the signs at issue set out in paragraph 57 of the judgment of 13 June 2019, HOSPITAL DA LUZ (T‑357/18, not published, EU:T:2019:416), that the element ‘laluz’ consists of a single word not by chance, but intentionally, in order to confer on it a fanciful element and to reinforce the weak characteristic of that element displayed as two words.

In that regard, it is appropriate to find that the fact that the element ‘laluz’ is displayed as a single word does not put into question the finding in paragraph 35 of the contested decision that the element ‘luz’ is the most distinctive element in the signs at issue and that the elements ‘da’ in the mark applied for and ‘la’ in the earlier mark have a limited impact only (see, to that effect, judgment of 13 June 2019, HOSPITAL DA LUZ, T‑357/18, not published, EU:T:2019:416, paragraph 58).

The present action must therefore be rejected in its entirety.

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Moreover, with regard to the costs incurred by the intervener before the Board of Appeal, it is sufficient to note that, given that the present judgment rejects the action brought against the contested decision, it is the operative part of the latter which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO — Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 74).

On those grounds,

hereby orders:

1.The action is dismissed.

2.Luz Saúde, SA is ordered to pay the costs.

Luxembourg, 16 June 2020.

Registrar

President

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Language of the case: English.