JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
29 February 2012 (*)
(Community trade mark – Invalidity proceedings – Community word mark L112 – Earlier French word mark L.114 – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 – No genuine use of the earlier mark – Article 57(2) and (3) of Regulation No 207/2009 – Declaration of partial invalidity)
In Joined Cases T‑77/10 and T‑78/10,
Certmedica International GmbH, established in Aschaffenburg (Germany), represented by P. Pfortner, lawyer,
applicant in Case T‑77/10,
Lehning entreprise, established in Sainte-Barbe (France), represented by P. Demoly, lawyer,
applicant in Case T‑78/10,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners before the General Court in Case T‑77/10 and Case T‑78/10 respectively, being
Lehning entreprise, and Certmedica International GmbH,
ACTION for annulment of the decision of the Second Board of Appeal of OHIM of 9 December 2009 (Case R 934/2009-2) relating to invalidity proceedings between Lehning entreprise and Certmedica International GmbH,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the applications lodged at the Court Registry on 18 February 2010 (Case T‑77/10) and 19 February 2010 (Case T‑78/10),
having regard to the responses of OHIM lodged at the Court Registry on 12 July 2010 (Case T‑77/10) and 14 July 2010 (Case T‑78/10),
having regard to the responses of the interveners lodged at the Court Registry on 29 June 2010 (Case T‑77/10) and 28 June 2010 (Case T‑78/10),
having regard to the change in the composition of the Chambers of the General Court,
having regard to the order of the General Court of 22 October 2010 joining Cases T‑77/10 and T‑78/10 for the purposes of the oral procedure and the judgment,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1 On 22 August 2001, Certmedica International GmbH filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign L112.
3 The goods in respect of which registration was sought are in Classes 5 and 29 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 5: ‘Pharmaceutical, veterinary and sanitary preparations; medical products for internal use; food supplements for medical purposes; dietetic foodstuffs concentrates with a shellfish base (including chitosan)’;
– Class 29: ‘Foodstuff concentrates with a shellfish base (including chitosan)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2002 of 25 March 2002. The Community trade mark was registered on 28 May 2004 under No 2 349 728.
5 On 7 August 2006, Lehning entreprise filed with OHIM an application for a declaration of invalidity of the mark L112 on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), read in conjunction with Article 52(1)(a) of that regulation (now Article 53(1)(a) of Regulation No 207/2009).
6 The application for a declaration of invalidity was based on the earlier word mark L.114, which was filed and registered in France on 14 June 1985 under No 1 312 700, to cover goods in Class 5 corresponding to the following definition: ‘pharmaceutical products’.
7 The application for a declaration of invalidity was directed against all the goods in Class 5 referred to in paragraph 3 above, with the exception of veterinary preparations.
8 By fax of 12 February 2007, acting at the request of Certmedica International, Lehning enterprise provided OHIM with items of evidence of genuine use of the earlier mark. That evidence was received by mail at OHIM on 15 February 2007, together with additional items of evidence. Lehning enterprise supplemented that evidence with additional items filed with OHIM by letter dated 5 December 2007.
9 By decision of 6 July 2009, the Cancellation Division of OHIM upheld Lehning entreprise’s application for a declaration of invalidity and annulled the registration of the mark L112 in respect of some of the goods in Class 5: ‘pharmaceutical preparations’, ‘sanitary preparations’, ‘medical products for internal use’ and ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan) (‘the decision of the Cancellation Division’). In its decision, the Cancellation Division stated that the registration of the mark remained valid as regards the ‘veterinary preparations’ in Class 5.
10 On 11 August 2009, Certmedica International filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
11 By decision of 9 December 2009 (‘the contested decision’), the Second Board of Appeal of OHIM partially upheld Certmedica’s appeal and annulled, in part, the decision of the Cancellation Division.
12 The Board of Appeal found, first of all, that the evidence provided by Lehning enterprise on 12 February 2007 was sufficient, on its own, to prove genuine use of the earlier French mark. According to paragraph 24 of the contested decision, that use was established in respect of ‘pharmaceutical products for the treatment of digestive maladies’. In its analysis, the Board of Appeal took the view that the relevant public included the average French consumer. As regards the goods at issue, the Board of Appeal found that the ‘pharmaceutical products for the treatment of digestive maladies’ were identical to the ‘pharmaceutical preparations’ and the ‘medical products for internal use’ and that they were similar to the ‘veterinary preparations’ and the ‘food supplements for medical purposes’, in respect of which the mark L112 had been registered. By contrast, the Board of Appeal found that the ‘pharmaceutical products for the treatment of digestive maladies’ were dissimilar to the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ and the ‘sanitary preparations’ covered by the mark L112. Regarding the signs, the Board of Appeal established the existence of a close similarity between the signs L112 and L.114. On the basis of an overall assessment, the Board of Appeal concluded that there was a likelihood of confusion solely in relation to the goods found to be identical or similar. On that basis, the Board of Appeal partially annulled the decision of the Cancellation Division and authorised registration of the mark L112 for ‘sanitary preparations’ and ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’. It dismissed the remainder of Certmedica International’s appeal and ordered each party to bear its own costs in the invalidity and appeal proceedings.
Forms of order sought
1. Case T‑77/10
13 In its action, Certmedica International claims that the Court should:
– annul the contested decision in so far as it declared the registration of the mark L112 invalid in respect of the ‘pharmaceutical and veterinary preparations’, the ‘medical products for internal use’ and the ‘food supplements for medical purposes’, in Class 5;
– in the alternative, annul the contested decision in so far as it declared the registration of the mark L112 invalid in respect of the ‘medical products for internal use’ and the ‘food supplements for medical purposes’, in Class 5;
– in the further alternative, annul the contested decision in so far as it declared the registration of the mark L112 invalid in respect of the ‘medical products for internal use’ in Class 5;
– dismiss Lehning entreprise’s application for a declaration of invalidity in respect of all of those goods or, at the very least, in respect of some of them and authorise the registration of the mark L112 in respect of all of those goods or, at the very least, in respect of some of them;
– order Lehning enterprise to pay all the costs incurred by Certmedica International in the invalidity proceedings and the appeal or, at the very least, part of those costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order Certmedica International to pay the costs.
15 The intervener, Lehning entreprise, contends that the Court should:
– dismiss the action;
– order Certmedica International to reimburse Lehning entreprise in respect of all the costs incurred since the application for a declaration of invalidity.
2. Case T‑78/10
16 In its action, Lehning entreprise claims that the Court should:
– annul the contested decision in so far as it authorised registration of the mark L112 in respect of the ‘sanitary preparations’ and the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’, in Class 5;
– uphold the contested decision as to the remainder;
– order Certmedica International to pay the costs incurred by Lehning enterprise since the application for a declaration of invalidity.
17 OHIM contends that the Court should:
– dismiss the action;
– order Lehning enterprise to pay the costs.
18 The intervener, Certmedica International, contends that the Court should:
– dismiss the action;
– dismiss the claim that Certmedica International should be ordered to reimburse Lehning entreprise in respect of the costs incurred since the application for a declaration of invalidity.
Law
1. The factual context submitted by the parties on the basis of evidence first produced before the Court
19 During the proceedings before the Court, both Certmedica International and Lehning enterprise produced evidence which they had not submitted in the proceedings before OHIM and put forward, on the basis of that evidence, arguments which they had not adduced before OHIM.
20 In particular, Certmedica International appended to its application a copy of the packaging of the product which it markets under the mark L112. In support of that item of evidence, it submitted – for the first time – that the mark L112 is used above all for slimming products and that the presentation (colour and background) of the sign L112 on the packaging of the product which it markets is completely different from that of the sign L.114 on the packaging of Lehning entreprise’s product.
21 For its part, Lehning enterprise sets out in its application a new factual context based on certain items of evidence which had not been produced before OHIM and, in particular:
– an extract from the dictionary Petit Robert Grand Format, containing the definition of the term ‘Diététique’ (dietetic);
– extracts from certain Internet sites intended to:
– describe the indications of the product marketed under the mark L112 and prove that that product is sold via internet pharmacy and alternative-medicine sites;
– describe the indications of the product marketed by Lehning enterprise under the mark L.114;
– prove that homeopathic preparations may also be used externally;
– a copy of the instructions for use of the product currently marketed by Certmedica International under the mark L112. On the basis of that document, Lehning enterprise explains – for the first time – the slimming function of that product, its active ingredient and the way in which it is marketed.
22 In that regard, it should be noted that, according to settled case-law, the purpose of bringing actions before the Court is to seek a review of the legality of decisions of the Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009 and, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 29, and judgment of 13 April 2011 in Case T‑98/09 Tubesca v OHIM – Tubos del Mediterráneo (T TUMESA TUBOS DEL MEDITERRANEO S.A.), not published in the ECR, paragraph 22 and the case-law cited).
23 It is apparent from Article 65 of Regulation No 207/2009 that facts which have not been relied on by the parties before the adjudicatory bodies of OHIM can no longer be invoked at the stage of the action before the Courts of the European Union. The General Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the way in which that body has applied European Union law, in the light, in particular, of the facts which were placed before it. By contrast, the Court cannot carry out such a review by taking into account matters of fact which have been newly produced before it (see Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraphs 52 to 54 and the case‑law cited, and the judgment of 9 September 2011 in Case T‑289/09 Omnicare v OHIM – Astellas Pharma (OMNICARE CLINICAL RESEARCH), not published in the ECR, paragraph 38).
24 It is also apparent from Article 65 of Regulation No 207/2009 that the Court cannot re-evaluate the factual circumstances in the light of evidence which had first been adduced before it (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25). To admit such evidence would be contrary to Article 135(4) of the Rules of Procedure of the General Court, under which the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see T TUMESA TUBOS DEL MEDITERRANEO S.A., paragraph 22).
25 It follows that, in so far as the new arguments of fact put forward by the parties rely on documents submitted for the first time before the Court, they must be declared inadmissible.
26 Furthermore, as regards more specifically the new factual arguments put forward by the parties regarding the goods actually marketed under the mark L112, it should be observed that, in the context of invalidity proceedings, OHIM may, for the purposes of its analysis, take account only of the list of goods as set out in the registration document of the Community trade mark, subject only to any subsequent amendments to that list (see judgment of 1 July 2009 in Case T‑16/08 Perfetti Van Melle v OHIM – Cloetta Fazer (CENTER SHOCK), not published in the ECR, paragraph 34 and the case-law cited). Consequently, the arguments put forward by Certmedica International and Lehning enterprise relating to the characteristics of the specific product for which Certmedica International currently uses the Community trade mark L112 are irrelevant in the present case.
2. The renvoi made by Certmedica International in Case T‑77/10 to the whole of its case-file before OHIM
27 In paragraph 31 of its application, Certmedica International makes a renvoi to all the pleas and arguments, taken as a whole, which it put forward during the proceedings before OHIM. That general renvoi is not related to the pleas and arguments set out in its application.
28 In that regard, it should be borne in mind that, under Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that statute, and under Article 44(1)(c) of the Rules of Procedure of the General Court, the application initiating proceedings must contain a summary of the pleas in law relied on. According to the case-law, the summary of the pleas relied on must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The Court has further held that, while the body of the application may be supported and supplemented by references to certain extracts from documents annexed to it, a general renvoi to other documents, even those appended to the application, cannot make up for the fact that the essential arguments are not set out in the application, and it is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (see, inter alia, Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 14 and the case-law cited).
29 It follows that, in so far as Certmedica International’s application makes a general renvoi to the documents filed by that party before OHIM, it is inadmissible.
3. Lehning entreprise’s head of claim in T‑78/10 seeking partial confirmation of the contested decision
30 In the section of its application relating to the form of order sought, Lehning enterprise claims that the Court should annul the contested decision in so far as it rejected Lehning entreprise’s application for a declaration of invalidity in respect of ‘sanitary preparations’ and ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’, and uphold the decision as to the remainder.
31 In particular, Lehning enterprise insists, in paragraphs 11 to 16 of its application, on the similarity between the signs L112 and L.114 and claims that the Court should confirm the analysis made by the Board of Appeal and the Cancellation Division of OHIM on that point.
32 In that regard, it should be borne in mind that, in accordance with Article 65(2) and (3) of Regulation No 207/2009, an appeal against a decision of the Board of Appeal may be brought only on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty or Regulation No 207/2009 itself, or of any rule of law relating to their application, or misuse of powers, and can result, if successful, only in the annulment or alteration of the contested decision.
33 On the basis of that provision, Lehning entreprise’s application must be declared inadmissible in so far as it claims that the Court should uphold the arguments which it put forward before OHIM and which the Board of Appeal treated favourably in the contested decision.
4. Substance
34 In Case T‑77/10, as has been stated in paragraph 13 above, Certmedica International disputes the validity of the contested decision in so far as it partially dismissed its appeal and declared the registration of the mark L112 invalid in respect of the ‘pharmaceutical and veterinary preparations’, the ‘medical products for internal use’ and the ‘food supplements for medical purposes’, in Class 5.
35 In Case T‑78/10, Lehning enterprise seeks annulment of the contested decision in so far as it partially upheld Certmedica International’s appeal and authorised the registration of the Community word mark L112 in respect of the ‘sanitary preparations’ and the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’, in Class 5 (see paragraph 16 above).
a) Case T‑77/10
36 Certmedica International relies on two pleas in law in support of its action, alleging: (i) infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation, concerning proof of genuine use of the earlier mark; and (ii) infringement of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, concerning the existence of a likelihood of confusion.
The first plea: infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation, concerning proof of genuine use of the earlier mark
37 Certmedica International disputes the Board of Appeal’s finding that Lehning enterprise had sufficiently proved genuine use of the mark L.114 in France during the relevant period, that is to say, from 25 March 1998 to 6 August 2006.
38 OHIM and Lehning enterprise dispute Certmedica International’s arguments.
39 It is apparent from the case-law relating to Article 57(2) and (3) of Regulation No 207/2009 that the purpose of the requirement that the earlier mark must have been put to genuine use is to limit the likelihood of conflict between two marks by protecting only trade marks which have actually been used, in so far as there is no sound economic reason for them not having been used (judgment of the Court of 23 September 2009 in Joined Cases T‑493/07, T‑26/08 and T‑27/08 GlaxoSmithkline and Others v OHIM – Serono Genetics Institute (FAMOXIN), not published in the ECR, paragraph 32 and the case-law cited).
40 In order to assess whether a particular trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, account being taken of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or to create a share in the market 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 (Case T‑427/09 centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM) [2011] ECR II‑0000, paragraph 27 and the case-law cited).
41 Under Rule 22(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), which, under Rule 40(6) of that regulation, is applicable mutatis mutandis in invalidity proceedings, proof of genuine use is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing sworn or affirmed, as referred to in Article 78(1)(f) of Regulation No 207/2009.
42 It is in the light of those considerations that an examination should be made as to whether the Board of Appeal was right to find that proof of genuine use of the earlier French mark had been furnished in the present case.
43 The Board of Appeal based its decision in that regard on four items of evidence.
44 First, the Board of Appeal referred to 26 invoices filed by Lehning enterprise on 12 February 2007. Those invoices, dating from 2000, 2002 and 2003, were issued by Laboratoires Lehning in the name of five different undertakings located in France. In those invoices, the product marketed under the mark L.114 is easily identifiable under the reference ‘4L11430ML’. As OHIM pointed out, the sales to which those invoices relate represent in excess of 60 000 items and account for a turnover of more than EUR 150 000. According to the Board of Appeal, it is those invoices which give the most credibility to the use of the mark L.114.
45 Without formally putting forward claim alleging infringement of its rights of the defence, Certmedica International submits in its application that it does not have those invoices.
46 In that regard, it should be borne in mind that, under the second sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
47 In the present case, it is apparent from paragraph 16 of the Cancellation Division’s decision that the invoices in question were sent by OHIM to Certmedica International by letter of 7 May 2007. Although the Cancellation Division erroneously refers to ‘44 invoices’ instead of ‘26 invoices’, there is no doubt that it is referring to the invoices mentioned in the contested decision since those invoices date from 2000, 2002 and 2003. It is also apparent from paragraph 26 of the Cancellation Division’s decision that those invoices were taken into account in respect of proving genuine use of the earlier mark.
48 In those circumstances, even though Certmedica International did not receive the invoices during the proceedings before the Cancellation Division, the fact remains that it knew of their existence when the Cancellation Division’s decision was read. Certmedica International could have complained that it did not have access to the 26 invoices in its appeal before the Board of Appeal. However, Certmedica International raised no such complaint, as the first time that it sought to rely on the possible failure to send the invoices was before the Court.
49 As has been stated in paragraphs 22 to 24 above, the review of the legality of decisions of the Boards of Appeal by the Court must be carried out in the light of the factual and legal context of the dispute as brought before those bodies. It follows that Certmedica International’s argument concerning the possible failure to send the invoices cannot be taken into account by the Court.
50 Secondly, the Board of Appeal relied, in order to determine whether genuine use had been made of the earlier mark, on a photograph of the packaging of the product marketed by Lehning entreprise – which shows the term ‘L114’, the words ‘troubles digestifs’ (‘digestive disorders’) and a reference to Lehning – and also on a copy of the instructions which come with that packaging.
51 According to Certmedica International, the photograph of the packaging provided by Lehning enterprise shows, at most, the use of a different mark, namely the Community trade mark L114 Lehning, registered after the disputed Community trade mark under the number 4 255 386. Certmedica International states in that regard that the full-stop after the capital letter ‘L’ is missing in the photograph of the packaging and that the reference to Lehning appears on the packaging in the same typeface as that used for the term ‘L114’.
52 According to settled case-law, proof of genuine use of an earlier national or Community trade mark also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 30 and the case-law cited).
53 In the present case, it must be held that the representation of the mark L.114 on the copy of the packaging provided by Lehning enterprise does not alter its distinctive character. Contrary to the assertions made by Certmedica International, the size of the reference to Lehning is noticeably smaller than the term ‘L114’. Furthermore, that reference appears together with the logo of the undertaking and is displayed on the lower part of the packaging, quite separately from the term ‘L114’. The missing full-stop between the capital letter ‘L’ and the number 114 constitutes a minor difference which does not deprive the earlier mark L.114 of its distinctive character. Furthermore, the other items of evidence used by the Board of Appeal do not always refer to Lehning and represent the earlier mark with the full-stop between the capital letter ‘L’ and the number 114.
54 Certmedica International’s argument that the copy of the packaging provided by Lehning enterprise does not constitute proof of genuine use of that mark must therefore be rejected.
55 Thirdly, the Board of Appeal accepted as proof an extract, translated into English, from a catalogue entitled ‘Lehning Therapeutic Index’, which refers to the product L.114 and states that it has been marketed since 1948.
56 According to Certmedica International, that extract does not prove use of the mark L.114 during the period concerned because it does not provide the slightest indication as to the year in which the catalogue was published.
57 In that regard, it should be borne in mind that, in accordance with the case-law referred to in paragraph 40 above, in order to assess whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, account being taken of all the relevant factors in the particular case. In that analysis, it cannot be ruled out that an accumulation of evidence may allow the necessary facts to be established, even though each of those pieces of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (judgment of 15 December 2010 in Case T‑132/09 Epcos v OHIM – Epco Sistemas (EPCOS), not published in the ECR, paragraph 28).
58 In the present case, even though the ‘Lehning Therapeutic Index’ bears no date, it may be taken into account for the purposes of assessing whether genuine use was made of the earlier mark, because it is additional evidence which supports the other items of evidence in the case-file, in particular the invoices produced by Lehning entreprise, the evidential value of which is not disputed by Certmedica International. In so far as the ‘Lehning Therapeutic Index’ is capable of illustrating the nature of the use of the mark L.114 and of showing that the product has been marketed since 1948, Certmedica International’s reservations concerning the taking into consideration of that item of evidence in the analysis of the genuine use of the earlier mark must be rejected.
59 Fourthly, the Board of Appeal referred to a solemn declaration made by the President of Laboratoires Lehning regarding the number of L.114 products sold in France during the period from 1996 to 2006 and the turnover corresponding to those sales, on a year by year basis. The Board of Appeal concedes that that declaration should not be given too much weight. However, it takes the view that it provides additional evidence of the substantial presence of L.114 on the market.
60 Certmedica International disputes the evidential value of that declaration since it is not a sworn declaration and is not drawn up in the language of the case before OHIM, namely English.
61 In that regard, it should be noted that Article 78(1)(f) of Regulation No 207/2009 permits the production as evidence not only of sworn statements in writing but also of affirmed declarations in writing (see paragraph 41 above). Likewise, the fact remains that the solemn declaration submitted by Lehning entreprise before OHIM was provided in English. Certmedica International’s arguments are therefore unfounded.
62 As regards Certmedica International’s position disputing the evidential value of certain screen shots provided by Lehning entreprise on 12 February 2007, it is sufficient to point out that, according to paragraph 27 of the contested decision, the Board of Appeal did not assess those documents as proof of genuine use of the earlier mark.
63 Lastly, Certmedica International’s argument that the items of evidence of genuine use provided by Lehning entreprise on 15 February 2007 cannot by taken into account because they were filed out of time is also based on a misreading of the contested decision. It is apparent from paragraphs 24 and 31 of that decision that the Board of Appeal took into account only the evidence produced by Lehning enterprise on 12 February 2007.
64 Consequently, the arguments put forward by Certmedica International do not call into question the Board of Appeal’s assessment concerning proof of genuine use of the earlier mark during the relevant period.
65 The first plea put forward by Certmedica International must therefore be rejected.
The second plea: infringement of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, concerning the likelihood of confusion
66 According to Certmedica International, the Board of Appeal found, wrongly, that the ‘pharmaceutical and veterinary preparations’, ‘medical products for internal use’ and ‘food supplements for medical purposes’ concerned by the disputed Community trade mark are identical or similar to the ‘pharmaceutical products for the treatment of digestive maladies’ covered by the earlier French mark.
67 Certmedica International also submits that the Board of Appeal erroneously assessed the similarity of the signs L112 and L.114.
68 OHIM and Lehning enterprise dispute the arguments put forward by Certmedica International.
69 Under Article 53(1)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark for the purposes of Article 8(2) of that regulation and where, inter alia, the conditions set out in Article 8(1)(b) of the regulation are fulfilled. Under Article 8(1)(b) of Regulation No 207/2009, 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. Furthermore, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State and trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
70 According 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 perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case C‑39/97 Canon [1998] ECR I‑5507, paragraphs 16, 17 and 29, and Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
71 In the overall assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 RESPICUR, paragraph 42 and the case-law cited).
72 It is in the light of those considerations that an examination should be made as to whether the Board of Appeal was right to find that, in the present case, there is a likelihood of confusion in respect of the goods regarded as identical or similar.
– The relevant public
73 The Board of Appeal took the view that, although the goods in question are in Class 5, the assistance of health-care professionals is not necessary to purchase any of them. Consequently, according to the Board of Appeal, the relevant public includes average French consumers in general. It should be noted, however, that the Board of Appeal assessed the likelihood of confusion of the marks at issue not only on the basis of the perception of average consumers, but also on the basis of the perception of particularly observant consumers.
74 Certmedica International and Lehning entreprise do not dispute the analysis carried out by the Board of Appeal as regards the relevant public.
75 OHIM submits that the public displays, in respect of the goods concerned, an above average degree of attentiveness which is nevertheless not very high.
76 In so far as the parties do not dispute the analysis made by the Board of Appeal and in so far as that analysis is in accordance with Regulation No 207/2009, it must be held that the public displays, in respect of the goods concerned, an above average degree of attentiveness.
– The comparison of the goods
77 According to settled case-law, in assessing the similarity between the goods or services concerned, all the relevant factors relating to them 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 Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
78 As was stated in paragraph 66 above, Certmedica International disputes the Board of Appeal’s assessment that ‘pharmaceutical products for the treatment of digestive maladies’ are identical to ‘pharmaceutical preparations’ and ‘medical products for internal use’ and similar to ‘veterinary preparations’ and ‘food supplements for medical purposes’.
79 As regards, in the first place, ‘pharmaceutical preparations’, Certmedica International submits, first, that the mark L112 is used for slimming products, which are different from ‘pharmaceutical products for the treatment of digestive maladies’ and are usually on sale on different shelves.
80 As was stated in paragraphs 20 and 22 to 26 above, that argument cannot be taken into consideration since it is based on an item of evidence submitted for the first time before the Court. In any event, it relates to the specific product for which the mark L112 is currently used and not the goods in respect of which that mark was registered. Certmedica International’s argument is thus neither admissible nor relevant for the purposes of assessing whether the goods at issue are identical or similar.
81 Secondly, Certmedica International maintains that ‘pharmaceutical preparations’ are not identical or similar to ‘pharmaceutical products for the treatment of digestive maladies’ on account of the specificity of the latter. Those specific goods cannot be regarded as belonging to the generic category of ‘pharmaceutical preparations’.
82 That argument cannot succeed. According to the case-law, goods can be regarded as identical where the goods covered by the earlier mark are included in a more general category covered by the subsequent trade mark application (Case T‑336/09 Häfele v OHIM – Topcom Europe (Topcom) [2011] ECR II‑0000, paragraph 36 and the case-law cited). ‘Pharmaceutical products for the treatment of digestive maladies’ are obviously included in the more general category of ‘pharmaceutical preparations’ covered by the disputed Community trade mark.
83 As regards, in the second place, the ‘medical products for internal use’ covered by the mark L112, it should be stated that that category of goods also includes the more specific category of ‘pharmaceutical products for the treatment of digestive maladies’ of the earlier mark. In accordance with the case-law referred to in paragraph 82 above, those goods must also be held to be identical.
84 Certmedica International’s arguments do not cast doubt on that conclusion.
85 Certmedica International submits, first, that, by contrast with ‘pharmaceutical products for the treatment of digestive maladies’, ‘medical products for internal use’ do not require administrative authorisation and have different technical and physical characteristics. In addition to the fact that those arguments are not substantiated, the existence or not of administrative authorisation and the specific characteristics of the goods marketed under the mark L.114 will have no influence on the perception of the observant consumer, who will regard the two products as identical, given that they belong to the same category.
86 The same conclusion must be drawn as regards the arguments which Certmedica International infers from the difference between the goods at issue in terms of manufacturing method and the place in which they are manufactured and sold. There may be a likelihood of confusion even if the goods at issue are manufactured and sold in different places or produced by means of different manufacturing techniques, as the decisive factor is still that the goods in question belong to same category of medical products.
87 As regards, in the third place, ‘veterinary preparations’, Certmedica International disputes the Board of Appeal’s finding, in paragraph 39 of the contested decision, that those goods are at the very least similar to ‘pharmaceutical products for the treatment of digestive maladies’ and its conclusion, in paragraph 47 of the contested decision, that the registration of the mark L112 must be declared invalid in respect of those goods.
88 In that regard, it should be stated that, in its original application for a declaration of invalidity before OHIM, Lehning entreprise did not dispute the validity of the registration of the mark L112 in respect of ‘veterinary preparations’ in Class 5 (see paragraph 7 above). In the operative part of its decision, the Cancellation Division stated, without ambiguity, that the mark L112 remained registered for that category of goods. The validity of such a finding was not disputed by the parties before the Board of Appeal.
89 Article 76(1) of Regulation No 207/2009 provides, under its closing words, that, in proceedings relating to relative grounds for refusal of registration, the Board of Appeal’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
90 In those circumstances, the Board of Appeal was manifestly not competent to rule, in the contested decision, on the registration of the mark L112 in respect of the ‘veterinary preparations’, as authorised by the Cancellation Division.
91 Since lack of competence on the part of the institution which adopted the contested measure constitutes a ground for annulment for reasons of public policy, it must be raised by the Court of its own motion (see, inter alia, Case T‑147/00 Laboratoires Servier v Commission [2003] ECR II‑85, paragraph 45 and the case-law cited).
92 The contested decision must therefore be annulled in so far as its operative part, read in the light of paragraphs 39 and 47 of the contested decision, implicitly, but necessarily, declares the registration of the mark L112 to be invalid in respect of ‘veterinary preparations’.
93 As regards, in the fourth place and lastly, the ‘food supplements for medical purposes’, Certmedica International’s arguments do not invalidate the Board of Appeal’s finding that those goods are similar to ‘pharmaceutical products for the treatment of digestive maladies’.
94 It is true, as Certmedica International states, that the goods involved are ‘food supplements’ and, therefore, a kind of foodstuff. However, those supplements have medical purposes. Certmedica International does not dispute in that regard that certain ‘food supplements for medical purposes’ may serve to prevent or treat gastric or intestinal disorders. ‘Food supplements for medical purposes’ may therefore be administered to patients in addition to treatment for digestive maladies and may have the same target consumers. In those circumstances, the Board of Appeal was right to find that the goods are similar. The fact that their manufacturing process may be different or that they are sold on different shelves in pharmacies does not call into question the finding that those goods may have the same intended purpose and may therefore be regarded as similar.
95 It follows that Certmedica International’s arguments relating to the comparison of the goods at issue must be rejected as, in part, ineffective ab initio and, in part, unfounded. The contested decision must however be annulled automatically in so far as the Board of Appeal exceeded its competence by declaring the registration of the mark L112 to be invalid in respect of ‘veterinary preparations’.
– The comparison of the signs
96 The overall assessment of the likelihood of confusion must be based, in so far as the visual, phonetic or conceptual similarity of the signs at issue is concerned, on the overall impression given by the signs, account being taken, inter alia, of their distinctive and dominant elements (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
97 It should be noted that the consumer generally pays greater attention to the beginning of a mark than to the end (see Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 30 and the case-law cited).
98 Certmedica International submits that the signs L112 and L.114 are not similar, whether visually, phonetically or conceptually.
99 OHIM and Lehning entreprise dispute the arguments put forward by Certmedica International.
100 As regards the visual comparison, it should be borne in mind, first, that – as has been stated in paragraphs 20 and 22 to 26 above – the appearance of the sign L112 on the packaging of the product marketed by Certmedica International cannot be taken into account since it is a fact which was not submitted before OHIM and, in any event, it relates to the specific product for which the mark L112 is currently used, analysis of which is irrelevant in the present case.
101 Secondly, the Board of Appeal was right to find that there is a notable structural similarity between the signs L112 and L.114. The signs are more or less identical in length. The two signs are similar in structure and are characterised by an identical reproduction of the capital letter ‘L’ and by a three-digit number which begins with 11 and differs only in respect of the last digit (2 instead of 4). It must be stated that – as OHIM remarked – the full-stop between the capital letter ‘L’ and the number 114 is hardly visible. It should therefore be observed that the impression which remains after seeing the signs at issue is that of a very similar visual configuration, particularly because the number 112 closely follows the number 114 in the sequence of numbers.
102 As regards the phonetic comparison, it is necessary, by contrast, to uphold Certmedica International’s arguments and to conclude that there is no similarity between the two signs. Even though the pronunciation in French of the beginning of the signs – ‘el san’ – is identical, the pronunciation of the end of the signs – ‘douz’ or ‘katorz’ – is different. In view of the relative brevity of the signs, that difference is significant phonetically and will be perceived by an observant consumer.
103 As regards the conceptual comparison, Certmedica International submits that the capital letter ‘L’, followed by a full-stop before the number 114, which appears, on the copy of the packaging produced before OHIM (see paragraph 50 above), together with the reference to Lehning, refers to the company Lehning entreprise, whereas such an association is not created in respect of the mark L112. In that regard, it should be stated, first, that the reference to Lehning does not appear in the earlier French mark L.114 as registered. In the analysis of the signs, only the mark appearing in the register may be examined. Accordingly, Certmedica International’s argument based on the presentation of the packaging provided by Lehning entreprise cannot be taken into consideration. Furthermore, as has already been stated in paragraphs 53 and 101 above, the full-stop in the mark L.114 is only a minor and hardly visible component of the earlier mark. There is therefore no reason to consider that the capital letter ‘L’, together with a full-stop, may lead consumers to associate the mark L.114 with the company Lehning entreprise.
104 It follows that, with the exception of the heads of claim relating to the phonetic similarity of the signs, Certmedica International’s arguments relating to the comparison of the signs L112 and L.114 must be rejected as unfounded.
– The likelihood of confusion
105 As was pointed out in paragraph 70 above, an overall assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see, inter alia, Canon, paragraph 17).
106 In referring to that principle of interdependence, the Board of Appeal confirmed, that there was, in the case before it, a risk of confusion between the marks L112 and L.114, in view of the goods which had been found to be identical or similar. According to the Board of Appeal, the sign L.114 will be perceived by particularly attentive consumers as a variant of the sign L112 within the same product line, because they are only differentiated by a small numerical variation and both signs designate identical or similar goods. In the case of average consumers, who cannot make such an association, the Board of Appeal takes the view that they will easily be able to confuse the two signs since the only difference between them lies in the last digit (2 instead of 4) and they will have an imperfect recollection of them.
107 In its action, Certmedica International disputes the impression that the two marks belong to the same family because, in its opinion, the two marks designate different goods. Certmedica International also dwells on the absence of similarity between the signs.
108 As has been stated in paragraphs 79 to 104 above, those arguments cannot be accepted. The Board of Appeal was right to find that ‘pharmaceutical products for the treatment of digestive maladies’ are identical to ‘pharmaceutical preparations’ and to ‘medical products for internal use’ and that they are similar to ‘food supplements for medical purposes’ (see paragraphs 79 to 95 above). The strong similarity of the signs has also been confirmed by the Court (see paragraphs 100 and 101 above). Although the signs are different phonetically (see paragraph 102 above), that difference alone does not call in question the Board of Appeal’s finding that, on the basis of an overall analysis of the signs and goods at issue, there is a likelihood of confusion.
109 That overall analysis has not been disputed by Certmedica International, which has merely stressed that there is no similarity between the goods and signs at issue.
110 In those circumstances, it must be held that the Board of Appeal’s examination concerning the likelihood of confusion between the two marks, as regards the goods found to be identical or similar, is not vitiated by any error.
111 The second plea put forward by Certmedica International in support of its action must therefore be rejected.
Conclusion regarding the action in Case T‑77/10
112 In the light of the foregoing, the contested decision must be annulled only in so far as it declares the registration of the mark L112 to be invalid in respect of ‘veterinary preparations’.
b) Case T‑78/10
113 Lehning entreprise puts forward a single plea in law in support of its action, alleging infringement of Articles 8, 52 and 53 of Regulation No 207/2009 in so far as the Board of Appeal found that the ‘pharmaceutical products for the treatment of digestive maladies’ concerned by the earlier mark were different from the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ covered by the disputed Community trade mark and in so far as it concluded, on that basis, that the Cancellation Division’s decision should be partially annulled.
114 In support of its action, Lehning entreprise submits, inter alia, that the goods marketed under the mark L112 have effects on human health; that they may be proposed as a complement to medical treatment; that they are distributed as a ‘medical device’ acting on the absorption of fats in the intestine; that they are marketed on internet pharmacy and alternative medicine sites and are contra-indicated in cases of serious digestive problems. In those circumstances, according to Lehning entreprise, the likelihood of confusion between the goods at issue cannot be in doubt. As regards, more specifically, ‘sanitary preparations’, Lehning entreprise stresses the fact that the difference in the way in which products are administered is not sufficient to prevent those goods from being found to be similar.
115 OHIM and Certmedica International dispute the arguments put forward by Lehning entreprise.
116 As was stated in paragraph 77 above, in assessing the similarity between the goods or services concerned, all the relevant factors relating to them 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.
117 In accordance with the case-law, goods intended for different publics cannot be regarded as substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 56).
118 Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (SISSI ROSSI, paragraph 60, and easyHotel, paragraph 57).
119 It is in the light of those considerations that an examination must be made as to whether the arguments put forward by Lehning entreprise call into question the Board of Appeal’s finding that the ‘sanitary preparations’ and the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ are different from the ‘pharmaceutical products for the treatment of digestive maladies’.
120 In that regard, it should be observed at the outset that, as was stated in paragraphs 21 to 26 above, Lehning entreprise’s arguments based on the characteristics of the product actually marketed by Certmedica International under the mark L112 may not be taken into consideration since they are based on new items of evidence and that, in any event, they relate to the specific goods for which the mark L112 is used and not the list of goods in respect of which that mark was registered.
121 The other arguments put forward by Lehning entreprise against the reasoning of the Board of Appeal regarding the difference between the goods at issue must also be rejected.
122 As regards, first, the ‘sanitary preparations’ for which the mark L112 was registered, the Board of Appeal was right to find that they cannot be regarded as similar to the ‘pharmaceutical products for the treatment of digestive maladies’.
123 The two products are clearly different as regards their nature and intended purpose.
124 The case-law relied upon by Lehning entreprise, according to which the difference in the way in which products are administered is not sufficient in itself to prevent those goods from being found to be similar (judgment of 11 November 2009 in Case T‑277/08 Bayer Healthcare v OHIM – Uriach-Aquilea OTC (CITRACAL), not published in the ECR, paragraph 43) is not relevant because it relates to a case in which it had been proved that the goods in question (healing salves to be applied to wounds and dietary supplements inclusive of calcium salt) could be complementary in some cancer therapies.
125 In the present case, however, it is not apparent from the file produced before OHIM that there is such complementarity. Furthermore, there is no indication or evidence that the ‘sanitary preparations’ and the ‘pharmaceutical products for the treatment of digestive maladies’ are intended for the same public and are capable of satisfying the same therapeutic needs.
126 The goods marketed under the mark L.114 are purchased by persons suffering from digestive disorders, whereas the ‘sanitary preparations’ are used inter alia for personal hygiene. As has been pointed out in the case-law, ‘sanitary preparations’, in so far as they may have the function of cleaning, beautifying and scenting the human body, have more similarity with ‘perfumeries’ (judgment of 16 November 2006 in Case T‑278/04 Jabones Pardo v OHIM – Quimi Romar (YUKI), not published in the ECR, paragraph 58). It should be noted, in that regard, that the application for registration of the mark L112 did not relate to sanitary preparations ‘for medical purposes’.
127 Lehning entreprise’s statement that the ‘sanitary preparations’ are sold in pharmacies and can be manufactured by pharmaceutical companies on the basis of the same know-how as that used in respect of the ‘pharmaceutical products for the treatment of digestive maladies’ does not make those goods similar since their nature and purpose are completely different. Pharmacies sell a great number of goods which are not necessarily in competition with or complementary to each other, just as a pharmaceutical company can, on the basis of the same know-how, manufacture a huge range of different goods.
128 It must therefore be held that the Board of Appeal legitimately found, in paragraph 42 of the contested decision, that the ‘sanitary preparations’ and the ‘pharmaceutical products for the treatment of digestive maladies’ are different goods.
129 As regards, secondly, ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’, the Board of Appeal was right to find that those goods may not be regarded as similar to ‘pharmaceutical products for the treatment of digestive maladies’.
130 Those two products do not have the same purpose and are intended for different consumers. The goods marketed under the French mark L.114 are medicinal products recommended for the treatment of digestive maladies whereas the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ are dietetic foodstuffs.
131 The case-law relied on by Lehning entreprise (judgment of 10 September 2008 in Case T‑48/06 Astex Therapeutics v OHIM – Protec Health International (astex TECHNOLOGY), not published in the ECR, paragraph 40; CITRACAL, paragraph 43; and judgment of 15 December 2009 in Case T‑412/08 Trubion Pharmaceuticals v OHIM – Merck (TRUBION), not published in the ECR, paragraph 32) is not relevant since those judgments concern goods which may be prescribed in a complementary manner in relation to certain health problems.
132 In the present case, Lehning entreprise did not show before OHIM how the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ and the ‘pharmaceutical products for the treatment of digestive maladies’ could be complementary. In that regard, Lehning entreprise’s argument that both products relate to the treatment of human health problems remains too general. Likewise, Lehning entreprise’s claim that both products can be used by the same consumers, who wish to supplement or replace their diet, is not substantiated. In contrast to the ‘food supplements for medical purposes’ (see paragraphs 93 and 94 above), there is no item in the file submitted before OHIM which shows that the ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ can help to prevent or to treat gastric or intestinal disorders or that the ‘pharmaceutical products for the treatment of digestive maladies’ are linked to weight loss.
133 Even if, as Lehning entreprise submits, the two products can be manufactured by the same undertakings in the medical or alternative-health fields and use the same distribution channels, those factors are not in themselves sufficient to support the conclusion that the goods in question are similar, given their different nature and intended purpose.
134 It is also necessary to reject Lehning entreprise’s argument that, at the time of filing the application for registration of the mark L112, Certmedica International itself took the view that there was a difference between dietetic foodstuff concentrates with a shellfish base as health products (application for registration in respect of Class 5) and as foodstuffs (application for registration in respect of Class 29). The fact that ‘pharmaceutical products for the treatment of digestive maladies’ and ‘dietetic foodstuffs concentrates with a shellfish base (including chitosan)’ can both fall within Class 5 does not prove that the two are identical or similar since the classes of the Nice Agreement often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way (see order in Case C‑282/09 P CFCMCEE v OHIM [2010] ECR I‑2395, paragraph 40 and the case-law cited).
135 As regards, lastly, the Cancellation Division’s decision No 2121/2000 of 26 September 2000 in Décathlon v Diete Sport France (HYDRA), also relied on by Lehning entreprise, it should be borne in mind that, according to settled case-law, decisions which the Boards of Appeal of OHIM are called upon to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The legality of those decisions must therefore be assessed solely on the basis of that regulation and not on the basis of the decision‑making practice prior to those decisions (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 71).
136 It is apparent from the foregoing that Lehning entreprise has not put forward any argument in support of its single plea in law which calls into question the Board of Appeal’s finding that the ‘sanitary preparations’ and the ‘dietetic foodstuffs concentrates with a shellfish base’ are goods which are different from the ‘pharmaceutical products for the treatment of digestive maladies’.
137 As Lehning entreprise did not submit in its application that the likelihood of confusion could be identified solely on the basis of the similarity of the signs, the Board of Appeal’s finding that there is no likelihood of confusion between the marks L112 and L.114 in respect of the goods which were found to be different must be upheld.
138 Lehning entreprise’s action must therefore be dismissed.
Costs
139 Under Article 87(2) 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.
140 Under the first subparagraph of Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the General Court may order that the costs be shared or that each party bear its own costs.
141 Under the third subparagraph of Article 87(4) of the Rules of Procedure, the General Court may order an intervener to bear its own costs.
1. Case T‑77/10
142 As was stated in paragraphs 95 and 112 above, the contested decision must be annulled solely in so far as it declared the registration of the mark L112 to be invalid in respect of ‘veterinary preparations’.
143 In those circumstances, each party must be ordered to bear its own costs pursuant to the first subparagraph of Article 87(3) of the Rules of Procedure.
144 In accordance with the third subparagraph of Article 87(4) of the Rules of Procedure, Lehning entreprise must be ordered to bear its own costs.
2. Case T‑78/10
145 As Lehning entreprise has been unsuccessful in Case T‑78/10, it must be ordered to bear its own costs and to pay those incurred by OHIM in accordance with the form of order sought by the latter.
146 In accordance with the third subparagraph of Article 87(4) of the Rules of Procedure, Certmedica International must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. In Case T‑77/10:
– annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 December 2009 (Case R 934/2009-2) in so far as it declares the registration of the mark L112 to be invalid in respect of ‘veterinary preparations’;
– dismisses the action as to the remainder;
– orders Certmedica International GmbH and OHIM to bear their own costs;
– orders Lehning entreprise to pay the costs incurred in connection with its intervention.
2. In Case T‑78/10:
– dismisses the action;
– orders Lehning entreprise to bear its own costs and to pay those incurred by OHIM;
– orders Certmedica International to pay the costs incurred in connection with its intervention.
Pelikánová | Jürimäe | Van der Woude |
Delivered in open court in Luxembourg on 29 February 2012.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
1. Case T‑77/10
2. Case T‑78/10
Law
1. The factual context submitted by the parties on the basis of evidence first produced before the Court
2. The renvoi made by Certmedica International in Case T‑77/10 to the whole of its case-file before OHIM
3. Lehning entreprise’s head of claim in T‑78/10 seeking partial confirmation of the contested decision
4. Substance
a) Case T‑77/10
The first plea: infringement of Article 57(2) and (3) of Regulation No 207/2009, read in conjunction with Article 15(1)(a) of that regulation, concerning proof of genuine use of the earlier mark
The second plea: infringement of Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009, concerning the likelihood of confusion
– The relevant public
– The comparison of the goods
– The comparison of the signs
– The likelihood of confusion
Conclusion regarding the action in Case T‑77/10
b) Case T‑78/10
Costs
1. Case T‑77/10
2. Case T‑78/10