JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
16 June 2010 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark KREMEZIN – Earlier international word mark KRENOSIN – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Proof of existence of the earlier trade mark – Time-limits – Rules 19 and 20 of Regulation (EC) No 2868/95 – Proof of genuine use of the earlier mark– Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009)
In Case T‑487/08,
Kureha Corp., established in Tokyo (Japan), represented by W. von der Osten-Sacken and O. Sude, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Sanofi-Aventis SA, established in Paris (France), represented by R. Gilbey, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 September 2008 (Case R 1631/2007‑4), concerning opposition proceedings between Sanofi-Aventis SA and Kureha Corp.,
THE GENERAL COURT (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, N. Wahl (Rapporteur) and A. Dittrich, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 17 November 2008,
having regard to the response of OHIM lodged at the Registry on 4 March 2009,
having regard to the response of the intervener lodged at the Registry on 12 February 2009,
having regard to the decision of 6 May 2009, refusing permission to lodge a reply,
having regard to the applicant’s letter lodged at the Registry on 12 August 2009, stating that it was withdrawing its initial application, made by letter of 17 July 2009, for a hearing,
having regard to the fact that no application for a hearing was made by the other parties within a period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to rule on the action without an oral procedure,
gives the following
Judgment
1 On 22 October 2002, the applicant, Kureha Corp., submitted an application for a Community trade mark to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under 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 The mark for which registration was sought is the word mark KREMEZIN.
3 The goods for which registration was sought fell, following the restriction made in the proceedings before OHIM, under Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Pharmaceutical preparations, all being for use in the treatment of renal disease, liver disease, diabetes mellitus and Crohn’s disease, all being in form of capsules, sachets or pouches, jelly, dried jelly, or provided in bottles, and all being for oral administration, and none being administered intravenously or being for use in the treatment of heart conditions.’
4 The application for the Community trade mark was published in Community Trade Marks Bulletin No 74/2003 of 22 September 2003.
5 On 19 December 2003, the intervener, Sanofi-Aventis SA, gave notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier international trade mark KRENOSIN registered on 29 June 1990 (No 529937) for ‘pharmaceutical, veterinary and sanitary products’ in Class 5 and covering inter alia the Benelux, Germany, Hungary, Italy, Portugal and Spain. The intervener annexed to its notice of opposition a copy of the official publication of that international registration issued by the World Intellectual Property Organisation (WIPO).
7 The ground relied upon in support of the opposition was that contained in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By fax of 29 January 2004, the Opposition Division informed the intervener, first, that its notice of opposition had been communicated to the applicant and, second, asked it to provide, within a period of four months, the facts, evidence and arguments on which its opposition was based. At the request of the parties, that period was extended until 30 November 2005.
9 By fax of 17 February 2004 addressed to OHIM, the applicant argued that the intervener’s opposition should be declared inadmissible as it did not clearly identify the countries in which the earlier mark actually had effect. In that regard, it stated that the intervener had not provided any evidence to show whether protection of its earlier mark was subsequently refused in any or all of the designated States. That communication was not notified at the time by OHIM to the intervener.
10 On 11 March 2004, the applicant requested OHIM to ensure that the intervener furnish proof of use of the earlier mark.
11 By fax of 17 March 2004, OHIM informed the applicant that it regarded the notice of opposition as admissible, since it identified the countries designated by the international registration of the earlier mark which, according to OHIM, was sufficient for admissibility purposes. In that fax, OHIM stated that the evidence substantiating the opposition would have to be supplied by the intervener at a later stage.
12 On 27 May 2004, the intervener sent OHIM various documents in order to establish genuine use of the earlier mark in Italy.
13 In its observations of 9 June 2006, the applicant reiterated its doubts concerning the admissibility of the notice of opposition. It also stated that, notwithstanding the fact that OHIM had indicated in its notification to the applicant of 17 March 2004 that the intervener was obliged to substantiate its opposition in the course of the proceedings, it had not done so. The intervener had not provided any such evidence to OHIM before 30 November 2005, the date of expiry of the period for submission of the data under Rule 19(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). Thus, the intervener had not shown whether protection of its mark was subsequently refused in any or all of the designated Member States. The applicant therefore concluded that the opposition had to be rejected. For the same reason, the applicant regarded as irrelevant the evidence provided by the intervener to establish genuine use of the earlier mark, since, according to the applicant, the intervener had not even established the existence of the earlier mark.
14 In its observations of 9 June 2006, the applicant also alleged that the evidence provided by the intervener in order to establish genuine use of the earlier trade mark covered only Italy in relation to a product consisting of a sterile solution of adenosine for use in the treatment of a specific heart condition, being for intravenous administration in hospitals. According to the applicant, that meant that there was a distinction between the goods covered by the earlier trade mark and those covered by the trade mark applied for.
15 On 26 June 2006, the Opposition Division invited the intervener to comment, within a period of two months, on the applicant’s observations of 9 June 2006.
16 In its observations of 16 August 2006, the intervener rejected the applicant’s arguments concerning the lack of evidence in the file substantiating the existence of its earlier right. In that regard, the intervener considered that the official publication of the registration of its earlier mark by WIPO had proved the existence of that mark, a fact that the applicant did not and could not deny.
17 On 13 October 2006, the Opposition Division informed the parties that they could not submit any further observations and that it would be giving a ruling on the basis of the evidence before it. By fax of 4 June 2007, the Opposition Division nevertheless asked the intervener to provide proof that the protection offered by its earlier mark had actually been granted in any or all of the countries designated by the international registration. The Opposition Division specified that its request was prompted by the applicant’s request made in its observations of 9 June 2006 (see paragraph 13 above).
18 On 20 June 2007, the intervener provided the Opposition Division with an extract from the Romarin International Trade Mark Data Base, obtained from the official website of WIPO (‘the Romarin extract’), attesting that registration had been granted in full, inter alia in Italy.
19 In its decision of 20 August 2007, the Opposition Division upheld the opposition and rejected the application for a Community trade mark. In support of its conclusion, it considered that the attentiveness of the relevant public was normal and that both the marks and the goods in question were similar.
20 On 15 October 2007, the applicant filed a notice of appeal under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.
21 By decision of 15 September 2008 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.
22 In particular, it considered that, first, the notice of opposition was admissible and, second, that the intervener had sufficiently proved the existence of its earlier right. Furthermore, the Board of Appeal considered that, on account of the high degree of similarity between the goods in question and the medium degree of similarity between the marks at issue, there was a likelihood of confusion between those marks in the territory of Italy.
Forms of order sought by the parties
23 The applicant claims that the Court should:
– annul the contested decision;
– order the intervener to pay the costs.
24 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
25 The intervener contends that the Court should dismiss the action.
Law
26 In support of its action, the applicant relies, essentially, on three pleas in law alleging, respectively, late submission of proof of the existence of the earlier mark, errors in the determination of the goods covered by the earlier mark, and infringement of Article 8(1)(b) of Regulation No 40/94.
Late submission of proof of the existence of the earlier mark
Arguments of the parties
27 By its first plea, the applicant claims essentially that the Opposition Division was wrong in finding that sufficient proof had been provided of the existence of the earlier mark. According to the applicant, the intervener had failed to prove the existence of its earlier right before 30 November 2005, the mandatory time-limit imposed by OHIM under Rule 19(2) of Regulation No 2868/95.
28 The applicant alleges that the Opposition Division erred in law, both by inviting the intervener after 30 November 2005 to submit proof of the existence of its earlier right and by basing its decision on the Romarin extract submitted by the intervener on 20 June 2007. The applicant also maintains that on 13 October 2006 the Opposition Division informed the parties that no further observations could be submitted by them and that it would give a ruling on the basis of the evidence before it. That meant that OHIM was not permitted to take the additional evidence provided on 20 June 2007 into account.
29 That manner of proceeding infringed essential procedural requirements and constituted a misuse of powers and an infringement of Rule 19(1) and (2) and Rule 20(1) of Regulation No 2868/95.
30 Therefore, the contested decision is flawed, since the Board of Appeal disregarded the errors committed by the Opposition Division.
31 OHIM and the intervener contest the applicant’s arguments. Moreover, OHIM submits a plea of inadmissibility. In that regard, it points out that the applicant did not, in the course of the proceedings before the Board of Appeal, complain that the Opposition Division had infringed the relevant provisions relating to time-limits but merely asked that the opposition be declared inadmissible. Therefore, the applicant’s plea changes the subject-matter of the proceedings before the Board of Appeal, contrary to Article 135(4) of the Rules of Procedure of the General Court.
Findings of the Court
32 As a preliminary point, it is necessary to examine OHIM’s plea of inadmissibility, according to which the first plea in law changes the subject-matter of the proceedings before the Board of Appeal.
33 According to the documents before the Court, the applicant bases its action before the Court on the facts and arguments which it presented before the Opposition Division and the Board of Appeal concerning the lack of proof of the existence of the earlier mark. In both those proceedings and before the Court, the applicant alleges that the intervener failed to present, before 30 November 2005, the time-limit laid down by OHIM under Rule 19(2) of Regulation No 2868/95, proof of the existence of its earlier mark and that, consequently, the Opposition Division was not entitled to take into account the evidence submitted after that time-limit.
34 In addition, in paragraph 10 of the contested decision, the Board of Appeal considered that the existence of the earlier mark had been properly substantiated in due time.
35 It follows that, in disputing the fact that the intervener’s earlier right had been proved sufficiently in due time and that the Opposition Division was entitled to take into account the evidence submitted by the intervener after 30 November 2005, the applicant has not changed the subject-matter of the proceedings. Therefore, OHIM’s plea of inadmissibility must be rejected.
36 On the substance, it must be recalled that it follows from Rule 19(1) and (2) and Rule 20(1) of Regulation No 2868/95 that the opposing party must provide evidence of the existence, validity and scope of protection of its earlier mark within the period laid down by OHIM. In the absence of such information, the Office is obliged to reject the opposition as inadmissible.
37 It must also be noted that the parties agree, first, that the period provided for under Rule 19(2) of Regulation No 2868/95 expired on 30 November 2005 and, second, that OHIM did not expressly invite the intervener to submit proof of protection of its earlier mark before that date.
38 It is clear, as regards international marks, that their protection may be refused after registration by one or more national authorities of the countries designated by such a registration. In that respect, OHIM practice, as follows from Part C of the Guidelines concerning Proceedings before OHIM (‘Opposition Guidelines’) applicable at the material time, was to accept the publication by WIPO as sufficient proof of registration. Only if the applicant contested registration of the mark in question in a territory was the opposing party required to provide evidence that the mark had not been refused.
39 In that context, it should be pointed out that the Opposition Guidelines are merely a set of consolidated rules setting out the line of conduct which OHIM proposes to adopt, which means that, provided that those rules comply with the applicable legal provisions, they constitute a self-imposed restriction on OHIM, in that it must comply with the rules of conduct which it has itself laid down (see, to that effect, Case T-410/07 Jurado Hermanos v OHIM (JURADO) [2009] ECR II‑1345, paragraph 20).
40 No provision of Regulation No 40/94 or Regulation No 2868/95 precludes the various levels of OHIM from considering that publication by WIPO of international registration meets the requirements of Rule 19(2) of Regulation No 2868/95. The applicant has, moreover, not challenged the compliance of the passage of the Opposition Guidelines referred to in paragraph 38 above with the provisions of those regulations.
41 Consequently, a possible challenge to the probative value of a WIPO publication of international registration is governed by Rule 20(2) and (4) of Regulation No 2868/95, since those two provisions govern the exchange of observations and evidence between the parties through OHIM, whereas Rule 19 of that regulation concerns only communication between OHIM and the opposing party.
42 It should also be recalled that Article 43(1) of Regulation No 40/94 (now Article 42(1) of Regulation No 207/2009), Article 74(2) of that regulation (now Article 76(2) of Regulation No 207/2009) and Rules 19 and 20 of Regulation No 2868/95, when read in conjunction, make clear that OHIM may, first, invite the parties to file observations as often as it deems necessary and, second, take into account, if it considers it to be appropriate, evidence communicated to it by the parties out of time.
43 It is in the light of those considerations that the Court must examine the merits of the first plea in law, according to which the existence of the intervener’s earlier mark had not been established in due time.
44 In that regard, given the wording of the Opposition Guidelines, of the applicant’s communication of 17 February 2004 to OHIM and of OHIM’s reply of 17 March 2004 (see paragraphs 9 and 11 above), OHIM was obliged, in order to decide the case, to request the intervener to submit proof that registration of the earlier mark had not been refused in the designated Member States.
45 The fact that OHIM did not expressly invite the intervener to provide that evidence before 30 November 2005, the date on which the period provided for under Rule 19(2) of Regulation No 2868/95 expired, cannot lead to the annulment of the contested decision.
46 Following the applicant’s decision to contest the probative value of the evidence provided by the opposing party, OHIM acted in conformity with Rule 20(4) of Regulation No 2868/95 and with the Opposition Guidelines in inviting the intervener to submit additional proof to show that registration of the mark had not been refused in any or all of the designated Member States.
47 It must also be pointed out that, as is apparent from paragraph 42 above, even had the Opposition Division in 2004 asked the intervener – which was not however the case – to provide proof that registration of the earlier mark had not been refused in the designated Member States, no provision prevented it from repeating that request in 2007. That conclusion cannot be invalidated by the fact that on 13 October 2006 the Opposition Division indicated to the parties that they could not submit any further observations.
48 It follows from the above that, even though there was a regrettable delay in dealing with the applicant’s request of 17 February 2004, since it was only on 4 June 2007 that the Opposition Division expressly invited the intervener to provide it with proof that the earlier mark had not been refused in the designated Member States, the contested decision cannot be annulled.
49 Accordingly the first plea in law must be rejected as unfounded.
Erroneous determination of the goods covered by the earlier mark
Arguments of the parties
50 The applicant contests the Board of Appeal’s assessment that the earlier mark was used for ‘pharmaceutical preparations for the treatment of the heart.’
51 According to the applicant, the Board of Appeal disregarded Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) and Rule 22(3) of Regulation No 2868/95 by adopting an excessively wide classification, since the proof sent by the intervener in order to prove use of its earlier mark showed only that that mark had been used for one product, that is ‘a sterile solution of adenosine for use in the treatment of a specific heart condition, being for intravenous administration in hospitals’.
52 The applicant also submits that it is clear from Article 8(3)(b) of Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community Code relating to medicinal products for human use (OJ 2001 L 311, p. 67), as amended by Directive 2004/27/EC of the European Parliament and of the Council of 31 March 2004 (OJ 2004 L 136, p. 34), that the earlier mark may be used only for a single product and not for an entire range of goods.
53 OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
54 It should be pointed out at the outset that the applicant’s reference to Article 8(3)(b) of Directive 2001/83 is irrelevant to the present case. The fact that that provision requires the name of the medicinal product to be indicated in the application for authorisation to place a medicinal product on the market has no bearing on the application of Article 43 of Regulation No 40/94 or of Rule 22 of Regulation No 2868/95.
55 With regard to the plea that the Board of Appeal disregarded Article 43(2) and (3) of Regulation No 40/94, it should be recalled that it is apparent from those provisions, read in the light of recital 9 in the preamble to that regulation (now recital 10 in the preamble to Regulation No 207/2009) and of Rule 22(3) of Regulation No 2868/95, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market. By contrast, the purpose of those provisions 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 mark (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38 and the case-law cited).
56 Moreover, it follows from Article 43(2) and (3) of Regulation No 40/94 that, if a trade mark has been registered for a category of goods which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (Case T-126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II-2861, paragraph 45, and Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 23).
57 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. It should in that regard be observed that 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 (ALADIN, paragraph 56 above, paragraphs 46 and 51, and RESPICUR, paragraph 56 above, paragraph 24).
58 In the present case, it must be pointed out that the category of pharmaceutical preparations constitutes a sufficiently broad category for it to be possible to identify within it a number of sub-categories capable of being viewed independently (see, to that effect, Case T-483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) [2006] ECR II‑4109, paragraph 28, and RESPICUR, paragraph 56 above, paragraph 26).
59 In that context, it is important to underline, first, that the criterion of the purpose or intended use of the product is of fundamental importance in the definition of a sub-category of goods and, second, that the purpose and intended use of a therapeutic preparation are expressed in its therapeutic indication. It must also be noted that a given medical condition can often be treated using a number of types of medication in various pharmaceutical forms containing different active ingredients, some of which are available over-the-counter whilst others are available only on prescription and must be administered by medical staff (see, to that effect, RESPICUR, paragraph 56 above, paragraphs 29 to 31).
60 In the light of the considerations set out in paragraphs 56 to 59 above, it is clear that the sub-category of goods suggested by the applicant, namely ‘a sterile solution of adenosine for use in the treatment of a specific heart condition, being for intravenous administration in hospitals’ cannot be accepted. That definition is not compatible with the case-law cited above, since, in giving not only the therapeutic indication but also the pharmaceutical form (liquid), the active substance (adenosine) and the method and place of administration (intravenous in a hospital), that definition encompasses only goods which are almost identical to those covered by the intervener’s trade mark and does not correspond to a category or to a sub-category of goods.
61 By contrast, the sub-category of goods identified by the Opposition Division and confirmed by the Board of Appeal, that is ‘pharmaceutical preparations for the treatment of the heart’, must be approved insofar as, first, it is based on the therapeutic indication of the goods at issue and, second, it is sufficiently broad not to undermine the intervener’s legitimate interest in being able, in future, to extend its range of goods or services while enjoying the protection which registration of that trade mark confers on it.
62 It follows from all of the foregoing that the second plea in law must be rejected as unfounded.
Infringement of Article 8(1) of Regulation No 40/94
Arguments of the parties
63 The applicant claims, in essence, that the Board of Appeal’s assessment of the similarity of the goods and marks at issue is erroneous and that it was wrong to find that there was a likelihood of confusion between those marks. In addition, the applicant alleges that the goods in question are not directed at the same public and that the relevant public has a level of attention which is higher than the average.
64 OHIM and the intervener contest the applicant’s pleas.
Findings of the Court
65 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, under Article 8(2)(a)(iii) of Regulation No 40/94 (now Article 8(2)(a)(iii) of Regulation No 207/2009), earlier trade marks are to be understood inter alia as trade marks registered under international arrangements which have effect in a Member State and which have a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
66 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion on the part of the public must be assessed globally, according to the relevant public’s perception of the signs and of the goods and services in question, and taking into account 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 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).
67 With regard to the relevant public, it should be noted that, in the assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see RESPICUR, paragraph 56 above, paragraph 42 and the case-law cited).
68 According to the case-law, where the goods in question are pharmaceutical products which, as in the present case, may require a doctor’s prescription, the relevant public is composed not only of end-users, but also of health professionals, that is, doctors who prescribe the medicinal product and pharmacists who sell that prescribed product (see, to that effect, Case C-412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraphs 52 and 63).
69 It must also be pointed out that the level of attentiveness of the average consumer of pharmaceutical products must be determined on a case-by-case basis, in the light of the particular circumstances of the case and, in particular, the therapeutic indications of the goods concerned. In the present case, the relevant public will display an above-average level of attentiveness, since the conditions which the goods at issue are designed to treat are relatively serious (see, to that effect, RESPICUR, paragraph 56 above, paragraph 46).
70 With regard to the similarity of the goods at issue, the applicant maintains that the Board of Appeal erred by not taking into account, first, the fact that the earlier mark was used only for a product consisting of a sterile solution of adenosine for use in the treatment of a specific heart condition, being for intravenous administration in hospitals, and, second, the fact that the goods in respect of which registration of the mark was applied for are to be used in the treatment of renal and liver disease, of diabetes mellitus and Crohn’s disease, none being administered intravenously or being for use in the treatment of heart conditions.
71 It must be noted that, in order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) of Regulation No 40/94, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks.
72 Therefore, and in the light of the finding in paragraph 61 above that the Board of Appeal correctly identified the goods protected by the earlier mark as pharmaceutical preparations for the treatment of the heart, the Board of Appeal’s comparative analysis of the goods covered by the marks at issue, undertaken in paragraph 20 of the contested decision, must be accepted.
73 As is clear from settled case-law, in order to assess the similarity of the goods covered by the marks at issue, all the relevant features of the relationship between those goods should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see Case C-416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 85, and judgment of 12 November 2008 in Case T‑87/07 Scil proteins v OHIM – Indena (affilene), not published in the ECR, paragraph 35 and the case-law cited).
74 Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37; see also, to that effect, Case T-164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II-1401, paragraph 53).
75 It is clear that, in the present case the goods covered by the marks at issue are of the same kind, namely pharmaceutical products, they are directed at the same consumers, namely health professionals and patients, and they use the same channels of distribution, namely health centres and chemist’s shops. The only differences between them are their therapeutic indications.
76 In those circumstances, it must be held that the similarities outweigh the differences and that the goods at issue are therefore similar; the applicant’s exclusion of drugs ‘administered intravenously or used in the treatment of heart conditions’ from the list of goods referred to in the application for the mark is, in that regard, irrelevant.
77 Contrary to the Board of Appeal’s assertion in paragraph 9 of the contested decision, the Court does not however consider that the goods in question display a high level of similarity, because their therapeutic indications differ greatly.
78 With regard to the similarity of the marks at issue, it should be noted that, first, the marks concerned are the earlier word mark KRENOSIN and the word mark KREMEZIN, registration of which is sought by the applicant and, second, that the global assessment of the likelihood of confusion must, as far as it concerns the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T-154/03 Biofarma v OHIM – Bausch & Lomb Pharmaceuticals (ALREX) [2005] ECR II‑4743, paragraph 52 and the case-law cited).
79 In the present case, the applicant claims that the Board of Appeal gave insufficient attention to the distinctive and dominant components of the marks at issue, that is to say the visual character of the letter ‘o’ which almost forms a circle and is the dominant visual component of the earlier mark, dividing that mark into two almost equal parts (‘kren’ and ‘sin’). Since the Community trade mark applied for lacks that strong visual impact, there are sufficient differences between the marks at issue.
80 From a phonetic point of view, the applicant argues that the Board of Appeal, in the contested decision, failed to take into account the phonetic peculiarity of the vowel ‘o’ and the fact that the vowels ‘e’ and ‘o’ sound very different. According to the applicant, there is a rather low level of phonetic similarity between the marks.
81 Regarding the visual comparison of the marks at issue, the applicant’s argument that the letter’o’ is the dominant and distinctive visual component of the earlier mark, in so far as it separates the first four letters from the last three, must be rejected.
82 In that regard, it must be pointed out that the marks at issue are both composed of a single word with three syllables, that is ‘kre’, ‘no’ and ‘sin’ for the earlier mark, and ‘kre’, ‘me’ and ‘zin’ for the mark applied for. In addition, those marks have the same number of letters, namely eight, five of which are identical and in the same order. In that context, it must be pointed out that the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T‑183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81, and Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65).
83 It follows that the initial part of the marks at issue, that is the component ‘kre’, is likely, on an overall visual impression, to attract more attention than the components ‘me’ and ‘no’. Furthermore, the Court considers that, visually, the letters ‘m’ and ‘n’ look rather alike.
84 It follows from the above that there is, in the present case, a high degree of visual similarity between the marks at issue.
85 Regarding the phonetic similarity between the marks at issue, the likelihood of confusion must be considered in relation to the Italian public, since genuine use of the mark has been established only as concerns Italy. In that regard, the Italian pronunciation of the first syllable of each of the marks at issue is identical and that of the last syllable of each virtually so. Because of the phonetic difference between the vowels ‘e’ and ‘o’, the second syllable of the marks at issue, that is ‘me’ and ‘no’, will be pronounced differently, although there is some phonetic similarity between the letters ‘m’ and ‘n’.
86 In the light of those considerations, the similarities between the marks at issue largely outweigh, from a phonetic point of view, the differences, so that, on an overall assessment, those marks display a high level of phonetic similarity.
87 Moreover, the applicant did not contest the Board of Appeal’s assertion that, conceptually, neither the earlier mark nor that applied for had any special meaning in Italian.
88 In the light of the foregoing considerations, it must be held that, given the overall impression created by the marks at issue, having regard, first, to their high degree of visual and phonetic similarity and, second, to the absence of any meaning which will enable the end consumer to distinguish them conceptually, those marks display a high level of similarity.
89 With regard to the applicant’s challenge to the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue, it is settled case-law that 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, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods and services in question, taking into account 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 GIORGIO BEVERLY HILLS, paragraph 66 above, paragraphs 30 to 33, and affilene, paragraph 73 above, paragraph 30 and the case-law cited).
90 In the present case, it was held above that the goods in question are similar and that the marks at issue display a high degree of similarity. In those circumstances, the Court considers that the fact that the relevant public is composed of persons whose level of attentiveness may be considered to be high is not sufficient to exclude the possibility that it might believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings.
91 It follows from the above that the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected as unfounded.
92 Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
Costs
93 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. Since the applicant has been unsuccessful and OHIM has asked for it to be ordered to pay the costs, the applicant must be ordered to pay the costs.
94 Since the intervener has not applied for the applicant to be ordered to pay the costs, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Kureha Corp. to pay its own costs and those of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);
3. Orders Sanofi-Aventis SA to bear its own costs.
Martins Ribeiro | Wahl | Dittrich |
Delivered in open court in Luxembourg on 16 June 2010.
[Signatures]