DECISION

of the Fifth Board of Appeal

of 5 November 2019

In case R 182/2019-5

Aristo Pharma GmbH
Wallenroder Straße 8-10 13435 Berlin Germany	Applicant / Appellant

represented by Einsel & Kollegen, Jasperallee 1a, 38102 Braunschweig, Germany

v

Novartis AG
Trademark Department 4002 Basel Switzerland	Opponent / Defendant

represented by Milojevic, Sekulic & Associates, S.L., C/ Clara Campoamor, 5 BW‑107, 03540 Alicante, Spain

APPEAL relating to Opposition Proceedings No B 2 918 665 (European Union trade mark application No 16 512 808)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Govers (Rapporteur) and A. Kralik (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 28 March 2017, the predecessor in title to Aristo Pharma GmbH (‘the applicant’) sought to register the word mark

FEMARIST

for the following list of goods:

Class 5 - Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

2. The application was published on 31 March 2017.

3. On 28 June 2017, Novartis AG (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, namely:

Class 5 - Pharmaceutical preparations.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on European Union trade registration No 838 417, for the word mark ‘FEMARA’ filed on 1 April 1996 and registered on 28 May 1999 for the following goods:

Class 5 - Pharmaceutical preparations.

6. By decision of 28 November 2018 (‘the contested decision’), the Opposition Division refused the trade mark applied for, for all the contested goods on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

• On 15 January 2018, the applicant requested that the opponent submit proof of use of the earlier mark on which the opposition was based. On 21 March 2018, within the time limit, the opponent submitted documents as evidence of use. The opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties. The evidence to be taken into account is, in particular, the following:

• Exhibits 1-4: 30 invoices issued by the opponent’s subsidiaries in Germany, Spain, France, and the United Kingdom to different customers in these territories.

• Exhibit 5: brochures about ‘FEMARA 2.5 mg’ products, in German, Italian and English. The documents in Italian contain either the year 2016 or November 2014. The documents in English, entitled ‘Highlights of Prescribing Information’ and ‘Full Prescribing Information’, refer to ‘FEMARA’ products and show the date of revision ‘11/2017’.

• Exhibit 9: a review in English, published by the European Medicines Agency (EMA), entitled ‘Questions and answers on Femara and associated names (letrozole, 2.5 mg tablets), — Outcome of a procedure under Article 30 of Directive 2001/83/EC’, dated 22 May 2012.

• Exhibit 11: a sworn declaration, dated 21 March 2018, by Wojciech Kreft, acting in his capacity as Novartis Pharma AG’s trade mark attorney and the opponent’s authorised signatory.

• The contested application was filed on 28 March 2017. The opponent was therefore required to prove that the earlier mark was put to genuine use in the European Union from 28 March 2012 to 27 March 2017 inclusive.

• The applicant argued that the opponent did not submit translations of some of the evidence of use. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office. Although the invoices, apart from those issued to customers in the United Kingdom, were not submitted in the language of the proceedings, invoices are generally considered by the Office to be self-explanatory documents, and consequently there is no need to request a translation.

• The documents filed, in particular the invoices, some of the brochures (i.e. those aimed at the Italian market) and the EMA’s review, in combination with the sworn declaration, provide sufficient information concerning the territorial scope, the duration and the frequency of use. They can be considered sufficient evidence of the trade mark having been used publicly and outwardly with a view to creating a commercial market. Therefore, the Opposition Division considers that the evidence submitted regarding the commercial volume, the territorial scope, the duration and the frequency of use of the mark is sufficient.

• However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark. The evidence proves use only for ‘pharmaceutical preparations for the treatment of breast cancer’. These goods can be considered to form an objective subcategory of ‘pharmaceutical preparations’, namely ‘pharmaceutical preparations for the treatment of cancer’. Therefore, the evidence shows genuine use of the trade mark only for ‘pharmaceutical preparations for the treatment of cancer’.

• The contested ‘pharmaceutical preparations’ include, as a broader category, the opponent’s ‘pharmaceutical preparations for the treatment of cancer’. Since one cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

• The goods found to be identical are directed at business customers with specific professional knowledge or expertise and at the public at large, contrary to the applicant’s arguments.

• Both medical professionals and non-professionals have a higher degree of attention, as these goods affect their state of health. The degree of attention is considered to be high.

• The relevant territory is the European Union.

• Visually and aurally, the signs coincide in their first five letters, ‘FEMAR’ (and their respective sounds), out of six letters in the earlier mark (thus constituting almost the entire earlier mark) and out of eight letters in the contested sign. The signs thus differ in their endings (and respective sounds), namely ‘A’ in the earlier mark and ‘IST’ in the contested sign, which are common suffixes in many languages of the relevant territory. Consequently, the relevant public will not pay much attention to these endings, which reinforces the conclusion that the coinciding first letters, ‘FEMAR’ carry the most weight in both signs. Therefore, the signs are visually and aurally similar to an above average degree.

• Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

• The earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

• On account of the commonality in the signs’ first five letters (‘FEMAR’), out of six in the earlier mark and eight in the contested sign, and taking into account the fact that the signs’ differing endings are common suffixes, the signs are visually and aurally similar to an above average degree, whereas, conceptually, no comparison is possible and thus this aspect has no impact on the assessment of the likelihood of confusion.

7. On 24 January 2019, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside to the extent that the trade mark applied for was refused.

8. On 24 January 2019, the applicant filed a limitation requesting the amendment of Class 5 to read as follows:

Class 5: Pharmaceutical and veterinary preparations, excluding preparations for the treatment of breast cancer; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

9. The statement of grounds of the appeal was received on 28 March 2019.

10. In its response received on 29 May 2019, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

11. The arguments raised in the statement of grounds may be summarised as follows:

• The documents filed by the opponent as proof of use refer only to a very specific type of good, i.e. to ‘pharmaceutical preparations for the treatment of cancer’. The earlier mark is clearly used – if at all – for only this single good and not for any other goods, which are included in the specification of goods of the mark applied for. Therefore, following the request for limitation filed by the applicant on 24 January 2019, the only product perhaps being of interest to the opponent has been excluded leading to conclude that there is no likelihood of confusion between the marks at issue.

• The opponent has filed a bulk of material which at a first glance might look impressive. However, some of the documents are not dated within the relevant time period and should be disregarded. Furthermore, the invoices only refer to a very small number of sales of a product called ‘FEMARA’, i.e. 5 or 10 items in each invoice, which are negligible. Additionally, it is not clear in which form or which type the trade mark ‘FEMARA’ is used in connection with the goods in question, because the opponent has not filed any packages or samples of the goods with the trade mark. Product leaflets filed by the opponent are hidden within the package and are unfolded by the purchaser of a respective article not at the time of buying but at the time of using the respective articles. Therefore, these leaflets do not demonstrate the use of the trade mark in connection with pharmaceutical preparations. Furthermore, the material filed by the opponent does not include any of the pharmaceutical preparations or photographic representations or other pictures of said pharmaceutical preparations showing the trade mark in question.

• Further, the opponent’s Sworn Declaration of Mr Wojciech Kreft (Exhibit 11) does not mention to which type of trade mark and which writing or picture the figures given are related since there is no reference to any real proof of use.

• Even if the Board of Appeal follows the arguments of the opponent that the opponent´s trade mark, considered to have been used, is the same as the earlier mark, it is only used for ‘pharmaceutical preparations for the treatment of cancer’.

• Bearing in mind that the specification of the contested goods was restricted prior to the filing of the appeal, the goods in question at the appeal stage are clearly not identical. ‘Preparations for the treatment of breast cancer’ are explicitly excluded from the specification of goods.

• The relevant public for both the earlier and the contested goods are medical professionals with a specific professional knowledge or expertise. They have a high degree of attentiveness since pharmaceutical preparations are related to health questions and, therefore, the pharmaceutical preparations and their differences will be easily noticed.

• The earlier mark has a ‘Romanic approach’ for all customers and looks like being a term in Italian or Spanish, or related languages, even if such a term does not exist. This is underlined by the letter ‘A’ which is a vowel and dominates the acoustic appearance of the earlier mark. To the contrary, the applicant’s mark gives creates the feeling of a person since terms with ‘IST’ as the last letters are in many languages a clear indication of a profession, see, for example, the German term ‘Jurist’ or the English term ‘Scientist’. Accordingly, products marked with trade marks ‘FEMARA’ and ‘FEMARIST’ will never be confused, since it is not only the association of the trade marks in question which is very different.

• The conflicting marks create very different visual impressions as ‘FEMARIST’ consists of 8 letters while ‘FEMARA’ of 6 letters. The letters which are very recognizable at the right-hand side of ‘FEMARIST’ are not present in the earlier sign at all, while ‘FEMARA’ has a remarkable duplication of the letter ‘A’ in front of, and behind, the last consonant ‘R’.

• The marks also sound very different. ‘FEMARA’ sounds very open, particularly at the end with the vowel ‘A’, while ‘FEMARIST’ is closed with a double consonant construction ‘ST’ at the end and a very different vowel ‘I’ in front of said consonants.

• The number of letters which are in alignment is not as impressive as emphasized by the opponent. Even if ‘FEM’ is not used in pharmaceutical preparations for the indication of a particular gender, all persons involved do know that ‘FEM’ is used as an abbreviation for female attributes in many cases. Accordingly, it will not be possible to have the idea that a plurality of trade marks starting with ‘FEM’ or ‘FEMAR’ will all indicate that they are produced by the same manufacturer.

• Consequently, no likelihood of confusion exists between the trade marks in question.

12. The arguments raised by the opponent in response may be summarised as follows:

• The applicant argues that the compared goods are not identical and the conflicting marks distinguishable in the minds of the relevant public. The opponent accepts the decision that proof of use is limited to ‘pharmaceutical preparations for the treatment of cancer.’ It should be noted that this is the second case where the Opposition Division has found that the mark ‘FEMARA’ has been put to continuous and on-going genuine use.

• The applicant notes that the opponent’s evidence of use relates specifically to the treatment of cancer; which the opponent does not contest.

• The applicant has argued that the evidence provided is not sufficient to prove the use of the earlier mark on which the opposition is based.

• The Opposition Division thoroughly examined the evidence in accordance with the law by first giving an itemized description for the different pieces of evidence submitted and then evaluating their admissibility and weight in relation to the proof of use criteria of place, time, extent, and nature of use. After evaluating the evidence, the Opposition Division correctly found that the prior mark had been used consistently with its function as registered, albeit for ‘pharmaceutical preparations for the treatment of cancer’ only, which the opponent does not contest.

• The applicant has attempted to circumvent the contested decision by filing a limitation after it was issued. Even if the applicant’s late limitation is accepted, the compared goods are still similar in accordance with well-established case‑law. The applicant does not even appear to argue against this only expressly stating that the goods are not identical.’

• In the present case, the prior goods are specific and the later goods merely exclude that specific indication, and do not exclude the other medicines which are, in fact, complementary and similar to those for the treatment of breast cancer. As such, even if the Board accepts the applicant’s limitation, the goods are still similar and the outcome must remain the same.

• The difference in the number of letters of the marks is not so high, and the root ‘FEMAR’ exists in both marks, contrary to the applicant’s arguments. The ending is not nearly as significant as the beginning of a word mark, as established by case‑law. This is particularly true in the pharmaceutical industry where common suffixes frequently appear in marks as indicative of variations in a family of brands. The most reasonable view of the compared marks would follow the expectations generated by the pharmaceutical industry over the years, namely that -A and -IST are suffixes for medicinal goods. As nearly the entire prior mark is incorporated in the applicant’s mark, it is sufficient to establish an above average level of visual similarity as determined by the Opposition Division.

• Contrary to the applicant’s arguments the endings ‘A’ and ‘IST’ have very different sounds. The opponent will not deny that the ending syllables have nothing in common. However, the first two syllables of the compared marks are identical. Further, as ‘A’ and ‘IST’ are common suffixes and weak sounds, the stress will be either on the first or second syllable. Additionally, the compared marks contain the same number of syllables. Therefore, because the stress and number of syllables are identical, the rhythm and intonation would also be the same.

• The root of both marks is ‘FEMAR-’, which has no meaning. The suffixes, however, are quite common, especially in the pharmaceutical industry. As to the ‘Romanic’ nature of the prior mark as argued by the applicant, it is unclear to the opponent how that impression would apply to ‘FEMARA’ but not to ‘FEMARIST’ when both suffixes ‘A’ and ‘IST’ are etymologically of Latin origin. While it is true that the suffix ‘IST’ does generally refer to a person, it appears in Latin-based languages such as Spanish, French, and Romanian as well as the Germanic languages. However, this in no way distinguishes ‘FEMARIST’ from ‘FEMARA’ when the roots are exactly the same. There does appear to be one item of common ground in that the opponent agrees with the applicant that the relevant consumer will know that a pharmaceutical preparation is not a person.

• The applicant admits that ‘FEM’ is not used with pharmaceutical products as an indication of sex but nevertheless insists that this coinciding syllable would not be viewed as associating the two marks. The opponent disagrees that there is any conceptual meaning in either mark, but even if ‘FEM’ were considered to have a meaning, it is the same meaning for both marks. If the applicant’s argument is taken as true, then the conceptual similarity between the marks would be identical. Nevertheless, the opponent agrees with the Office’s finding that there is no conceptual meaning in either mark, and therefore, a conceptual comparison is not warranted.

• The applicant’s position that the signs are dissimilar is contrary to the facts of the case and the practice of the courts and the Office. Bearing in mind the distinctiveness of the earlier mark and the perception of the relevant public, the compared marks are visually and phonetically similar to an above average degree.

• The applicant has failed to show that the Opposition Division erred in ruling that the use of the earlier mark has been proven and that there is a likelihood of confusion between the marks in conflict within the meaning of Article 8(1)(b) EUTMR.

Reasons

13. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

14. As a transitional measure, Article 80 EUTMDR foresees that the CTMIR and BoA‑RoP shall continue to apply to ongoing proceedings until such proceedings are completed, provided that the EUTMDR does not apply in accordance with its Article 82.

15. Pursuant to Article 82(2)(d) and (j) EUTMDR, in the present case the EUTMDR has to be applied with respect to the proof of use and the appeal proceedings.

16. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Preliminary remark on the request for limitation of the contested application

17. In accordance with Article 49(1) EUTMR, the applicant may restrict the list of goods and services of its application provided that the restriction does not broaden the subject matter of the application as originally filed and that the list of goods and services is worded in such a manner as to indicate clearly the nature of the goods and services. The applicant must identify the goods and services for which protection is sought with sufficient clarity and precision in order to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought (Article 33(2) EUTMR; see also 19/06/2012, C-307/10, IP Translator, EU:C:2012:361, § 49).

18. The applicant’s limitation request reads as follows: ‘Pharmaceutical and veterinary preparations, excluding preparations for the treatment of breast cancer; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.’

19. The opponent argues in its observations that regardless of the limitation, even if the goods at issue are no longer identical, they are at least similar.

20. The Board finds the limitation request acceptable. Even though the requested limitation is a negative restriction of the list of goods applied for, by excluding certain pharmaceutical preparations, it is sufficiently clear and precise to identify the goods that are excluded by the restriction and also the goods that remain in the register (see to that effect 19/07/2017, T–432/16, медве́дь (fig.), EU:T:2017:527, § 48).

21. Following the limitation, the list of the goods at issue in the present appeal now reads as follows:

Class 5: Pharmaceutical preparations, excluding preparations for the treatment of breast cancer.

22. The Board will base its assessment on the list of the contested goods as limited (see paragraph 21 above).

Proof of use

23. Pursuant to Article 47(2) EUTMR, if the applicant so requests, the proprietor of an earlier European Union trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of filing or the date of priority of the European Union trade mark application, the earlier European Union trade mark has been put to genuine use in the Union ‘in connection with the goods and/or services in respect of which it is registered and which he cites as justification for his opposition’, or that there are proper reasons for non-use, provided the earlier European Union trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier European Union trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

24. Pursuant to Article 10 EUTMDR, the opposing party has to furnish proof of use within such period as the Office shall specify. The evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods in respect of which it is registered and on which the opposition is based. These conditions are cumulative; therefore, if one of them is not adequately substantiated, it will be considered that genuine use of the earlier trade mark has not been proven.

25. According to the case‑law of the Court of Justice, there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C‑149/11, Leno, EU:C:2012:816, § 29; 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 27; 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43).

26. For genuine use to have been made of the opposing trade mark the goods in question must be present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign, so that it can be perceived by consumers as an indication of the origin of the goods or services in question (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 31‑37; 09/07/2003, T‑156/01, Giorgio Aire, EU:T:2003:198, § 37).

27. In the present case, the applicant’s request that the opponent furnish proof of use of the European Union trade mark registration No 838 417 was admissible as this trade mark was registered more than five years before the filing date of the contested application.

28. The contested trade mark was filed on 28 March 2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union during the period from 28 March 2012 to 27 March 2017 inclusive, in relation to the goods on which the opposition is based, namely the following:

Class 5 – Pharmaceutical preparations.

29. The indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark.

30. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Board will describe the evidence only in the most general terms without divulging data that is not otherwise available from publicly accessible sources.

31. To this effect, the opponent submitted a variety of evidence, as described at paragraph 6, consisting of numerous invoices (Exhibits 1-4), product brochures (Exhibit 5), a review published by the European Medicines Agency (EMA review) (Exhibit 9), a sworn declaration issued by Mr Kreft, authorised signatory for the opponent (Exhibit 11).

32. Furthermore, the opponent submitted the following evidence, which was not listed in the contested decision:

• Screenshots from several websites, namely Google Search results of the word ‘FEMARA’, Chemocare, Wikipedia (Exhibits 6-8);

• A copy of the decision in case No R722/2008-4, dated 12 February 2010 (Exhibit 10).

33. The evidence was analysed thoroughly by the Opposition Division, which held that the opponent had proved use of the earlier EU trade mark in respect of ‘pharmaceutical preparations for the treatment of cancer’ in Class 5 only. It is worth noting that neither the applicant, nor the opponent has contested the contested decision’s finding in this respect.

34. The applicant, however, argues that part of the evidence has not been submitted in the language of the proceedings, which renders it inadmissible. Furthermore, the invoices submitted only show negligible amounts of sales, and therefore the evidence does not demonstrate sufficient turnover, which means that the earlier mark has not been put to extensive use for ‘pharmaceutical preparations for the treatment of cancer’ in Class 5.

35. Article 10(6) EUTMDR, by derogation from the general language rules for opposition proceedings, provides that ‘the Office may require’ the opposing party to submit a translation, i.e. it confers a discretionary power on the Opposition Division.

36. The Opposition Division explained why it did not request a translation of the evidence of use from the opponent, pointing out that invoices are generally considered to be self-explanatory. Moreover, the information available in the remaining untranslated documents, at least those in Italian, can be easily grasped. Taking into account the nature of the untranslated documents that are considered relevant for the present proceedings, the Board concurs with the Opposition Division that a translation of the evidence was not necessary as the self-explanatory character of these documents made their content easily understandable, at least in general terms (15/12/2010, T-132/09, EPCOS, EU:T:2010:518, § 52-53; 12/12/2016, R 2282/2015-2, INCELLA / In-Cell-Art et al., § 87; 10/06/2016, joined cases R 2105/2015-2 & R2110/2015-2, talentum Schools (fig.) / TALENTUM et al., § 48; 30/04/2008, R 1630/2006-2, DIACOR / DIACOL, § 46-47).

37. The purpose of proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade‑mark protection to the case where large‑scale commercial use has been made of the marks (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36‑38, and the case‑law cited therein). However, data relating to sales of the goods covered under the earlier trade mark have to be provided (31/01/12, T‑378/09, Spa Group, EU:T:2012:34, § 82).

38. In light of the foregoing, it is necessary to carry out a global assessment of the evidence submitted by the opponent. Consequently, the Board will assess the proof furnished in the context of a global appreciation. All the circumstances of the specific case must be taken into account and all of the proof submitted has to be assessed together.

39. The Board will first examine the evidence submitted regarding the time, nature, place and extent of use in order to establish, in a second step, if the evidence seen as a whole reflects genuine use of the earlier mark.

40. In respect of the sworn statement dated 21 March 2018, of Mr. Wojciech Kreft, it is first recalled that supporting documents and items which may be provided for the purpose of proving use of a mark, include statements in writing, sworn or affirmed, as referred to in Article 78(1)(f) EUTMR. Nevertheless, it is clear from the case-law that statements by a party with close links to the party concerned are of lesser probative value than those of third parties and cannot on their own constitute sufficient evidence (16/06/2015, T‑585/13, Gauff JBG Ingenieure, EU:T:2015:386, § 28 and the case-law cited; 15/02/2017, T-30/16, Natural Instinct, EU:T:2017:77, § 41).

41. The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42). Statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence and must be supported by other evidence (11/12/2014, T-498/13, la nana, EU:T:2014:674, § 38 and the case-law cited therein). However, this does not mean that such document does not have any probative value at all.

42. The statement at issue is made by Mr. Wojciech Kreft, acting in his capacity as the opponent’s trade mark attorney and as its authorised signatory, i.e. someone with close links to the opponent, and as such the contents of the statement have to be corroborated and supported by the further documents filed by the opponent.

Time of use

43. It must be pointed out that it is not a matter of examining whether the trade mark has been put to continuous use over the course of the relevant period, but one of ensuring that the mark has been put to genuine use during that period, and more particularly of assessing whether the scale and frequency of the use of that mark was such as to demonstrate the presence on the market in an actual and consistent manner over time (05/06/2013, T-495/12, T-496/12 & T‑497/12, Dracula Bite, EU:T:2014:423, § 34, 35 and the case-law cited therein).

44. The majority of the invoices (Exhibits 1-4) are issued to different companies in France, Germany, Spain and the United Kingdom within the relevant time period. The remaining invoices submitted by the opponent were issued the same year as the end of the relevant period. The product information brochures (Exhibit 5) in Italian contain either the date of November 2014 or 2016, while some of the brochures in German contain the date of October 2017, which is the same year as the end of the relevant time period. The EMA review (Exhibit 9) is dated in 2012. Even though, some of the documents are dated outside the relevant period, these dates either show years at the beginning or at the end of the relevant period, and therefore only help to demonstrate that the trade mark has been used continuously over time, which extends beyond the relevant period.

45. Therefore, the Board endorses the contested decision’s finding that the proof of use, assessed as a whole, demonstrates that the requirement of the time of use is satisfied in relation to the relevant period.

Place of use

46. The territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors. Since the earlier mark is a European Union trade mark, use of the mark had to be shown in the European Union.

47. It is not necessary that the mark should be used in an extensive geographic area for use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 54, 55).

48. In the present case, the Board agrees with the contested decision that the goods marketed by the opponent were sold in the relevant territory. Indeed, the documentation submitted by the opponent, specifically the invoices (Exhibits 1‑4), are addressed to customers within the relevant territory i.e. different customers with addresses in various cities/towns in France, Germany, Spain and the United Kingdom, and the product brochures (Exhibit 5) submitted in German and Italian, which are clearly meant for the customers in these countries, demonstrate use across a substantial portion of the relevant territory. Furthermore, the EMA review (Exhibit 9) indicates that the goods with the ‘FEMARA’ trade mark are authorised to be prescribed by medical professionals in the European Union.

49. It follows that the evidence submitted also satisfies the requirement of the place of use.

Nature of use

50. It is noted that ‘nature of use’ in the context of Article 10(3) EUTMDR further comprises the need for evidence on use of the mark as registered, or of a variation thereof according to Article 18(1)(a) EUTMR, and the use for the goods and services for which it is registered.

51. Under Article 18(1)(a) EUTMR, use of an EUTM includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

52. The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (27/02/2014, T-226/12, Lidl, ECLI:EU:T:2014:98, § 49 and the case-law cited).

53. The earlier mark as registered is ‘FEMARA’. The applicant argues that from the evidence submitted it is unclear in which form the earlier mark is used, since on some of the documents the word ‘FEMARA’ appears in different colours and stylised letters. Specifically, the applicant claims that the sworn declaration (Exhibit 11) does not mention to which type of trade mark or to which picture the figures in the sworn declaration relate. The Board notes that the earlier mark ‘FEMARA’ is a word mark and word marks are protected as such irrespective of the use of small or capital letters or of certain fonts, or colours, as the case may be (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 22/05/2008, T-254/06, Radiocom, EU:T:2008:165, § 43; 25/06/2013, T-505/11, dialdi, EU:T:2013:332, § 65). The sworn declaration expressly refers to the trade mark ‘FEMARA’, whereas other documents show the word mark ‘FEMARA’ in different typefaces, or stylised colour versions. Therefore, the Board dismisses the applicant’s argument, because it is clear that all the documents submitted show the use of the opponent’s word mark ‘FEMARA’, irrespective of different fonts or colours.

54. It results from the aforesaid that the distinctive character of the earlier mark is not altered, for the purposes of Article 18(1)(a) EUTMR, by the form in which the trade mark is used in the documentation provided for the file.

Extent of use

55. Concerning the extent of use to which the earlier mark has been put, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

56. The proof of use must consist of solid and objective evidence of effective and efficient use (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

57. The Board emphasises that the requirement for the extent of use does not mean that the opponent has to reveal the entire volume of sales or turnover figures. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310,§ 72).

58. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule, which would not allow the Office or, on appeal, the General Court, to appraise all the circumstances of the dispute before it, cannot therefore be laid down (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 25).

59. The invoices (Exhibits 1-4) issued to customers in France, Germany, Spain and the United Kingdom contain references to different quantities of packages sold. The Board notes that the invoices submitted are only a selection of invoices to demonstrate sales to different customers across the European Union. In its observations the opponent has also confirmed that the invoices submitted are only a sampling, and they represent considerably large sales in the above mentioned countries. Furthermore, it can be seen from the invoice numbers, which are not consecutive, which means that in between the presented invoices there have been many other invoices either to the same or different customers selling, among others, the goods with the earlier trade mark.

60. The Board thus notes that the amounts shown on the sworn declaration signed by Mr Kreft (Exhibit 11) for the years 2015 to 2017 are highly likely to reflect the actual sales during those years, since, as mentioned above, the invoices submitted are only a selection of invoices, and therefore the amounts do not reflect all the sales during the relevant period. Therefore, the applicant’s argument that the sales amounts shown on the invoices are negligible must be dismissed.

61. Taking these factors into account, it can be concluded that the extent of use of the mark is significant.

Use of the mark in relation to the registered goods

62. If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant subdivisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45).

63. Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 46).

64. The earlier mark was registered for ‘Pharmaceutical preparations’ in Class 5. However, the Opposition Division held that the evidence adduced by the opponent did not lead to the conclusion that the mark had been used for all the goods covered by the earlier mark. Neither of the parties has contested this finding.

65. In view of the documentation provided, the Board concurs with the finding of the contested decision that the use was only demonstrated in relation to ‘pharmaceutical preparations for the treatment of cancer’, which forms an objective subcategory of the registered goods ‘pharmaceutical preparations’ in Class 5.

Global assessment of the evidence of use

66. From the general principles for the assessment of proof of use mentioned above, it follows that in order to examine whether the earlier trade mark has been put to genuine use, a global assessment must be undertaken that considers all the relevant factors (29/02/2012, T-77/10 & T‑78/10, L112, EU:T:2012:95, § 57 and the case‑law cited).

67. What matters is the impact of the use on the internal market; more specifically, whether it is sufficient to maintain or create market share on that market for the goods and services covered by the mark, and whether it contributes to a commercially relevant presence of the goods and services on that market. Whether that use results in actual commercial success is not relevant (Advocate General’s opinion delivered on 19/12/2012, C-149/11, Leno, EU:C:2012:816, § 50). Even use of the mark by a single client, which imports the products for which the mark is registered, can be sufficient to demonstrate that such use is genuine if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq.).

68. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). However, the more limited the volume of sales of items bearing the mark, the more necessary will it be for the party opposing a new registration to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (08/08/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37; 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 31).

69. The Board will assess the proof furnished in the context of a global appreciation. All the circumstances of the specific case must be taken into account and all of the proof submitted has to be assessed together. Therefore, although some items of proof may be insufficient on their own to substantiate the use of the earlier trade mark, they may contribute to substantiating the use together with other documents and information.

70. It is assumed that the proof of use does not precisely reflect all sales achieved but, generally speaking, is a demonstration of genuine use of the trade mark, since the opponent is obliged only to prove genuine use of the trade mark, not all the sales achieved or its commercial success. As a consequence, the proof is deemed to be sufficient to substantiate that use of the earlier trade mark is genuine.

71. The invoice samples provided substantiate continued use. The invoices provided, together with the product brochures, the EMA review and the sworn declaration can be considered to be sufficiently representative evidence of the trade mark being used publicly and outwardly with a view to creating commercial markets in the European Union.

72. Thus, this Board takes the view that there are sufficient indications to establish that use of the earlier mark was stable and on-going as regards ‘pharmaceutical preparations for the treatment of cancer’ in Class 5.

Likelihood of confusion – Article 8(1)(b) EUTMR

73. Pursuant to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered 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.

74. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

75. According to established case-law, a likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18). In particular, it must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the marks, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). It should be borne in mind that the similarity of the marks and the similarity of the goods are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

76. The assessment of a likelihood of confusion must also take into account the distinctive character of the earlier mark. Indeed, trade marks with a highly distinctive character either per se or because of the recognition they possess on the market, enjoy broader protection than trade marks with a less distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

Relevant public and territory

77. As a preliminary point, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products and services 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 (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42).

78. Given that the earlier trade mark is a European Union trade mark, the relevant public is the public in the European Union.

79. The average consumer of the category of goods concerned is reasonably well informed and reasonably observant and circumspect (15/02/2011, C-353/09 P, Center Shock, EU:C:2011:73, § 48).

80. However, the average consumer’s level of attention is likely to vary according to the category of goods and services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein).

81. The Opposition Division rightly held that the goods in question are likely to be aimed at the public at large as well as professional consumers with specific professional knowledge or expertise. The Board recalls that, as regards pharmaceutical goods, it is settled case-law that professionals display a high level of attention (21/10/2008, T-95/07, Prazol, EU:T:2008:455, § 29; 15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 11/06/2014, T-281/13, Metabiomax, EU:T:2014:440, § 30). As regards general end-consumers, their level of attention will also be higher than average in respect of medicines, whether or not issued on prescription, since they affect a consumer’s state of health (07/06/2012, T-492/09 & T-147/10, Allernil, EU:T:2012:281, § 29; 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).

82. Consequently, the degree of attention will be relatively high for the goods in Class 5 as they have medical purposes and/or can have an impact on health and the human body. This has not been challenged by the parties.

Comparison of the goods

83. In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Additional factors include the purpose of the goods and services, whether or not they can be manufactured, sold or supplied by the same undertaking or by economically-linked undertakings, and also their distribution channels and sales outlets.

84. The goods on which the opposition is based and in respect of which the opponent has proved genuine use are the following:

Class 5: Pharmaceutical preparations for the treatment of cancer.

85. The goods applied for which are at issue in the present appeal are the following:

Class 5: Pharmaceutical preparations, excluding preparations for the treatment of breast cancer.

86. By filing its request for a limitation of the list of goods of the contested mark, the applicant has excluded from the list very specific goods, namely ‘preparations for the treatment of breast cancer’.

87. The Board notes that breast cancer is only one of the possible manifestations of cancer diseases, which all display an abnormal growth of cells, which tend to proliferate in an uncontrolled way, and in some cases, to metastasize. ‘Pharmaceutical preparations for the treatment of cancer’ may be indicated for different types of cancers and the treatment can depend on the stage of the cancer. Even though the applicant has excluded ‘preparations for the treatment of breast cancer’, the goods applied for contain preparations for the treatment of over a hundred other types of cancer.

88. The Board further recalls that the purpose and intended use of a therapeutic preparation are expressed in its therapeutic indication (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 30). The therapeutic indication of the earlier goods is the treatment of cancer. The therapeutic indication of the contested goods includes, among many other therapeutic indications, the treatment of cancer, with the exception of the treatment of breast cancer.

89. In this regard the Board notes that since the goods of the earlier mark are ‘pharmaceutical preparations for the treatment of cancer’, they overlap with the goods applied for, which among many other pharmaceutical preparations include pharmaceutical preparations for the treatment of different types of cancer. Therefore, the Board finds that the goods at issue are identical.

Comparison of the marks

90. With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

91. In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30 upheld by appeal by order of 28/04/2004, C-3/03 P, Matratzen, EU:C:2004:233; 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43, upheld on appeal by order 01/06/2006, C-324/05 P, Turkish Power, EU:C:2006:368).

92. The signs to be compared are:

    FEMARA	FEMARIST
    Earlier mark	Contested sign

93. The earlier mark is a word mark consisting of the sole word ‘FEMARA’. The contested sign is also a word mark consisting of the sole word ‘FEMARIST’.

94. Since both signs are word marks, neither of the signs has a dominant element.

95. For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (03/09/2010, T-472/08, 61 a nossa alegria, EU:T:2010:347, § 47, and the case-law cited therein).

96. The applicant argues that the coinciding sequence ‘FEMA’ will be recognised by the European public as referring to ‘a female’ and that it is used as a prefix in medicine to refer to female patients and therefore is devoid of any distinctive character. The Board agrees with the finding of the contested decision that the letters ‘FEM’ might be associated with ‘a female’ or feminine gender in several EU languages, such as English, French, Italian and Spanish. As such, for this part of the public, the letters allude to the fact that the goods are meant for use by women. However, in other languages, such as Bulgarian, Hungarian and Polish, these letters have no association with the feminine gender. Therefore, the applicant’s claim must be dismissed to the extent that it involves the public in the European Union as a whole.

97. Even if the element ‘FEM’ is considered to have a weak distinctive character for part of the relevant public, it is not sufficient to conclude that the marks at issue taken as a whole have weak distinctive character (22/11/2018, T‑59/18, FEMIVIA / FEMIBION INTIMA et al., EU:T:2018:821, § 67-68).

98. Further, the applicant has argued that the earlier mark has a ‘Romanic approach’ to it and would be perceived as a term in Spanish or Italian, while the contested sign will create a reference to a person due to its ending ‘-IST’. The Board notes, as also stated by the opponent, that there is nothing unusual about the ending ‘ARA’ to indicate that this word originates from a Romance language as there are many words in different languages with such an ending. As to the ending ‘-IST’, even though it may be associated with a person or certain professions, this is not necessarily the case for all EU languages. Consequently, the applicant’s argument must be dismissed.

99. In line with the contested decision, it is considered that neither of the signs has any meaning in the relevant territory, and therefore both signs are distinctive as a whole.

100. Overall, the earlier mark’s inherent distinctiveness is normal.

101. Visually, the signs coincide in five out of six and eight letters, respectively. It is noted that the signs fully coincide in their beginnings ‘FEMAR’, the beginning of a sign being the part that the public tends to pay the most attention to. The signs differ in the final letter ‘A’ in the earlier mark and the element ‘IST’ placed at the end of the contested sign. Taking into account that the signs fully coincide in their beginnings and only differ in their endings, the Board agrees with the finding of the contested decision that the signs are visually similar to an above average degree.

102. Aurally, the signs coincide in the sound of the five letters ‘F-E-M-A-R’ placed at the beginning of the signs. The pronunciation differs in the endings ‘A’ in the earlier mark and ‘IST’ in the contested sign. Furthermore, both signs would be pronounced in three syllables (‘FE-MA-RA’ versus ‘FE-MA-RIST’). Taking into account that the pronunciation of the first two syllables and the beginning of the third syllable are identical, the only difference lying in the very endings of the signs, the Board finds that the signs are aurally similar to at least an average degree.

103. Conceptually, the beginnings of the signs ‘FEMA’ will be understood by a part of the relevant public as referring to a ‘female’, as explained above. However, although the marks are similar to this extent, the notion of ‘female’ is weak for the part of the public that perceives it, as it alludes to the fact that the goods are meant for use by women. As a whole, neither of the marks as a whole has any meaning for the relevant public. Consequently, the conceptual comparison does not influence the assessment of the similarity of the signs for the part of the public that does not pick up on the notion of ‘female’, while for the part of the public that does perceive this notion, there is some conceptual similarity between the signs.

104. Given the above considerations, the signs are considered similar overall.

Overall assessment of the likelihood of confusion

105. The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth Recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

106. Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

107. The Board has confirmed that the goods in conflict are identical. The earlier mark has a normal level of distinctiveness and the level of attention of the relevant public is deemed to be high. The marks in question have been found to be similar overall, because they are visually similar to an above average degree and aurally similar at least to an average degree due to the coinciding element ‘FEMAR’ placed at the initial parts of the signs, while the conceptual comparison does not influence the assessment of the similarity of the signs for a part of the public, while for another part of the public, there is some conceptual similarity between the signs.

108. Even for a public with a high level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48 and the case-law cited).

109. As a result, the Opposition Division was correct in concluding that there is a likelihood of confusion between the marks in conflict in respect of the contested goods.

110. It follows that the appeal must be dismissed.

Costs

111. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

112. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

113. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opposition fee of EUR 320 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 170.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicant in the opposition and appeal proceedings is EUR 1 170.

Signed G. Humphreys

Signed C. Govers

Signed A. Kralik

Registrar: Signed H. Dijkema