JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
22 June 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark ‘FARMA MUNDI FARMACEUTICOS MUNDI’ – Earlier Community figurative mark ‘mundipharma’ – 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))
In Case T‑76/09,
Mundipharma GmbH, established in Limburg an der Lahn (Germany), represented by F. Nielsen, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by W. Verburg, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Asociación Farmaceuticos Mundi, established in Alfafar (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 1 December 2008 (Case R 825/2008-2) concerning opposition proceedings between Mundipharma GmbH and Asociación Farmaceuticos Mundi,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro and H. Kanninen (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court on 16 February 2009,
having regard to the response lodged at the Court Registry on 12 June 2009,
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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 9 January 2006, Asociación Farmaceuticos Mundi filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now 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 trade mark in respect of which registration was sought is the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 5, 35 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of 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 preparations, sanitary preparations for medical purposes; dietetic substances adapted for medical use’;
– Class 35: ‘Commercial retailing and retailing via global computer networks of pharmaceutical preparations, sanitary preparations for medical purposes and dietetic substances’;
– Class 39: ‘Storage, distribution, delivery and packaging of pharmaceutical, sanitary, and dietetic preparations’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 30/2006 of 24 July 2006.
5 On 24 October 2006, the applicant, Mundipharma GmbH, filed a 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.
6 The opposition was based on the earlier Community figurative mark reproduced below:
7 The figurative mark reproduced above covers, inter alia, goods and services in Classes 5 and 44 of the Nice Agreement corresponding, for each of those classes, to the following description:
– Class 5: ‘Pharmaceutical and veterinary preparations, and sanitary products for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’;
– Class 44: ‘Medical and veterinary services; hygienic and beauty care for human beings or animals’.
8 The opposition was directed against all the goods and services covered by the Community trade mark application and was based on the goods and services in Classes 5 and 44 respectively covered by the earlier Community trade mark.
9 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
10 On 29 April 2008, the Opposition Division partially allowed the opposition and, consequently, rejected the application for the Community trade mark FARMA MUNDI FARMACEUTICOS MUNDI in respect of the goods and services in Classes 5 and 35. First, it held that the goods in Class 5 covered by the trade mark applied for were identical to goods in the same class covered by the earlier trade mark. Next, it indicated that the services in Class 35 covered by the trade mark applied for and the goods in Class 5 covered by the earlier trade mark were similar. It concluded from those findings that there was a likelihood of confusion between the signs at issue, for the goods and services in Classes 5 and 35, due to their phonetic and visual similarities. However, the Opposition Division rejected the opposition regarding the services in Class 39 covered by the trade mark applied for on the ground, first, that those services and the goods in Class 5 covered by the earlier trade mark were not similar and, second, that those services were obviously dissimilar to the services in Class 44 covered by the earlier trade mark.
11 On 2 June 2008, the applicant filed an appeal with OHIM, on the basis of Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
12 By decision of 1 December 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. First, it noted that, although ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary, and dietetic preparations’ in Class 39 covered by the trade mark applied for could not be provided without the pharmaceutical, sanitary, and dietetic preparations covered by the earlier trade mark, it could not be inferred from this that the services in Class 39 and the goods in Class 5 were similar, since they differed significantly in relation to all the relevant factors which characterised the ways in which they were linked. In that regard, the Board of Appeal held, first, that the services and goods in question had a different nature and purpose. Next, it indicated that those goods and services were neither interchangeable nor substitutable for one another and were not, therefore, in competition. As regards complementarity, the Board of Appeal noted that the act of delivering goods in Class 5 to customers who had ordered them was merely the execution of a contract of sale which was not connected to transport services within the meaning of Class 39. Lastly, the Board of Appeal considered not only that the goods and services in question were intended for different publics, but also that the places of sale for those goods and services were not the same. According to the Board of Appeal, the goods covered by the earlier trade mark are intended for the end consumer, while the services covered by the trade mark applied for concern a public of professionals. Therefore, the services in Class 39 covered by the trade mark applied for and the goods in Class 5 covered by the earlier trade mark are not similar. The Board of Appeal indicates, moreover, that the services in Class 39 are obviously dissimilar to the services in Class 44. Consequently, the Board of Appeal concluded that, notwithstanding a possible similarity between the signs, since the services in Class 39 were not similar to any of the goods or services covered by the earlier trade mark, there could be no likelihood of confusion between the signs at issue.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
16 As a preliminary point, it should be noted that, in support of its plea, the applicant sets out its arguments but also refers to ‘the submissions made in its briefs of October 24, 2006 and August 22, 2008’, namely its pleadings lodged respectively before the Opposition Division and the Board of Appeal in the course of the proceedings before OHIM.
17 Under Article 44(1) of the Rules of Procedure of the General Court, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those Rules, an application initiating proceedings must contain a summary of the pleas in law on which the application is based. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which, under those provisions, must appear in the application itself (Case T‑183/03 Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) [2004] ECR II‑3113, paragraph 11, and judgment of 4 March 2010 in Case T‑477/08 Mundipharma v OHIM – ALK-Abelló (AVANZALENE), not published in the ECR, paragraph 16). Therefore, the general reference, in the application, to the observations submitted by the applicant in the pleadings it lodged before OHIM cannot be taken into consideration.
18 The applicant disputes the contested decision in so far as the Board of Appeal found that there was no likelihood of confusion between the signs at issue regarding the services in Class 39 covered by the Community trade mark application and the goods in Class 5 covered by the earlier Community trade mark.
19 Article 8(1)(b) of Regulation No 40/94 provides that, 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.
20 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 line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular 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 case-law cited).
21 It has also been held that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and case-law cited).
22 Consequently, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, it is still necessary, even where the two marks are identical, to adduce evidence of similarity between the goods or services covered by them (see, to that effect, Case T‑150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 27, and easyHotel, paragraph 43).
23 In assessing the similarity of the goods or services in question, all the relevant features of the relationship between them should be taken into account. Those factors include, inter alia, their nature, their intended purpose, 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 case-law cited).
24 In the present case, although the Board of Appeal also found that there was no similarity between the services in Class 39 covered by the trade mark applied for and the services in Class 44 covered by the earlier trade mark, the applicant only disputes the lack of similarity found by the Board of Appeal between, on the one hand, the services in Class 39 covered by the trade mark applied for and, on the other hand, the goods in Class 5 covered by the earlier trade mark. Thus, only the validity of that finding will be examined, since the undisputed findings of the Board of Appeal must be considered to be established.
25 In the contested decision, the Board of Appeal held that the services in Class 39 covered by the Community trade mark application, namely ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary, and dietetic preparations’, have a different nature and purpose, depend on different distribution channels and are intended for different publics from the goods in Class 5 covered by the earlier trade mark, namely ‘pharmaceutical and veterinary preparations, and sanitary products for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’. The Board of Appeal held, moreover, that those services and goods were neither interchangeable nor substitutable and were not in competition.
26 First, it must be stated that the applicant does not dispute the difference in nature and purpose found by the Board of Appeal between the services in Class 39 and the goods in Class 5, as described above. Nor does it submit specific criticism as regards the Board of Appeal’s finding that the relevant public for which those services and goods are intended, and likewise their distribution channels, are different. Furthermore, although the applicant claims that ‘the similarity between goods and services does not depend on whether or not the goods and services are … “interchangeable” or “substitutable” or “in competition”’, it must be stated that it does not challenge the Board of Appeal’s assertion that, since those services and goods are neither interchangeable nor substitutable, they are not in competition.
27 The applicant submits, however, that the goods and services in question are complementary. Firstly, it argues that ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary, and dietetic preparations’ are inseparably connected with pharmaceutical, sanitary and dietetic preparations, because those services are specifically intended for those goods. Secondly, it notes that the goods in Class 5 and the services in Class 39 have a close connection in so far as the pharmaceutical companies who manufacture pharmaceutical, sanitary and dietetic preparations also supply the services in Class 39, particularly when working to order. Therefore, the applicant claims that, where pharmaceutical, sanitary, and dietetic preparations, on the one hand, and ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations’, on the other hand, are covered by the same mark or a similar mark, it is inevitable that the public will presume that those goods and services come from the same undertaking or from economically linked undertakings.
28 According to case-law, goods or services are complementary if 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 the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 60, and easyHotel, paragraph 57).
29 However, even where the goods in Class 5 covered by the earlier trade mark and the ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations’ services in Class 39 covered by the trade mark applied for show some kind of connection between them, in particular in so far as the manufacture and sale of those goods may also involve their storage, delivery, distribution and packaging, that fact is not sufficient for them to be considered complementary in the present case.
30 It should be noted that there is nothing in the file that invalidates the Board of Appeal’s finding, supported by OHIM in its response, that, in essence, the relevant public for ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations’ is made up of professionals, while the end consumer of pharmaceutical preparations will buy them, inter alia, from a pharmacy without using those services. As has already been mentioned in paragraph 26, the applicant does not dispute the Board of Appeal’s finding that the relevant public for which the services and goods are intended is different. By definition, goods and services intended for different publics cannot be complementary (see, to that effect, easyHotel, paragraphs 57 and 58).
31 Consequently, the Board of Appeal was correct to hold that the services in Class 39 and the goods in Class 5 were not similar.
32 That conclusion cannot be undermined by the applicant’s argument that a manufacturer of pharmaceutical, sanitary and dietetic preparations also provides packaging, storage, distribution and delivery of those goods. Those activities must be considered to be subsidiary to that manufacturer’s main business and not services which are separate from that main business, in Class 39 (see, to that effect, judgment of 7 February 2006 in Case T‑202/03 Alecansan v OHIM – CompUSA (COMP USA), not published in the ECR, paragraphs 46 and 47).
33 Nor, moreover, is it apparent from the file, including in the ‘selling to order’ situation invoked by the applicant, that pharmaceutical companies use the trade mark for storage, distribution, delivery and packaging of pharmaceutical preparations, independently of their main business of manufacturing and selling those goods. On the contrary, the applicant itself indicates in its application that the fact that a pharmaceutical company provides ‘storage, distribution, delivery and packaging of pharmaceutical, sanitary and dietetic preparations’ when working to order ‘corresponds to the usual course of business activity’.
34 It follows that the single plea in law must be rejected and, therefore, the action as a whole dismissed.
Costs
35 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, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Mundipharma GmbH to pay the costs.
Truchot | Martins Ribeiro | Kanninen |
Delivered in open court in Luxembourg on 22 June 2011.
[Signatures]