Case T-222/09

Ineos Healthcare Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark ALPHAREN – Earlier national word marks ALPHA D3 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Examination of the facts of OHIM’s own motion – Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Observations of third parties and opposition – Facts, evidence and observations submitted in support of the opposition – Opportunity for the opposing party to adduce evidence in support of the opposition

(Commission Regulation No 2868/95, Art. 1, Rules 15(2)(c) and (3)(b) and 19(1))

2.      Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Opposition proceedings – Examination restricted to the submissions of the parties – Well-known facts taken into account – Pharmaceutical products

(Council Regulation No 40/94, Art. 74(1))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Assessment of the likelihood of confusion – Determination of the relevant public

(Council Regulation No 40/94, Art. 8(1)(b))

1.      It follows from a combined reading of Rules 15(2)(c) and (3), and 19(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark that, in opposition proceedings, the opposing party has the opportunity and not the obligation to adduce evidence in support of the opposition, in particular as regards the similarity of the goods and services concerned.

Similarly, the evidence referred to in Rule 15(3)(b) of Regulation No 2868/95 need not necessarily cover all aspects of the comparison of the goods.

(see paras 16-17, 21)

2.      Under Article 74(1) of Regulation No 40/94 on the Community trade mark, ‘in proceedings relating to relative grounds for refusal of registration, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.

That provision relates, in particular, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence which the parties have presented. However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources.

The description of pharmaceutical preparations and their therapeutic indications cannot, having regard to their highly technical nature, in any way be regarded as information constituting well-known facts.

(see paras 28-29, 31)

3.      As regards the assessment of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, where the goods at issue are medicinal products requiring a doctor’s prescription prior to their sale to end-users in pharmacies, the relevant public comprises both end-users and health professionals, that is to say doctors who prescribe the medicinal product and pharmacists who sell the prescribed medicinal product. Even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for consumers since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times.

Even in the case of medicinal products requiring a doctor’s prescription, it cannot be ruled out that the average consumer forms part of the relevant public.

(see paras 43-44)