JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber)
23 September 2009 (*)
(Community trade mark – Invalidity proceedings – Community word mark FAMOXIN – Earlier national word marks LANOXIN – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009) – Proof of use – Article 56(2) and (3) of Regulation No 40/94 (now Article 57(2) and (3) of Regulation No 207/2009))
In Cases T‑493/07, T‑26/08 and T‑27/08,
GlaxoSmithKline SpA, established in Verona (Italy),
Laboratórios Wellcome de Portugal, Lda, established in Algés (Portugal),
The Wellcome Foundation Ltd, established in Greenford, Middlesex (United Kingdom),
represented by R. Gilbey, lawyer,
applicants,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Serono Genetics Institute SA, established in Évry (France),
THREE ACTIONS brought against the decisions of the First Board of Appeal of OHIM of 14 September 2007 (Case R 8/2007-1), of 20 November 2007 (Case R 10/2007-1) and of 19 November 2007 (Case R 9/2007-1), concerning cancellation proceedings between on the one hand, GlaxoSmithKline SpA, Laboratórios Wellcome de Portugal Lda and The Wellcome Foundation Ltd and, on the other, Serono Genetics Institute SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),
composed of N.J. Forwood, President, D. Šváby (Rapporteur) and E. Moavero Milanesi, Judges,
Registrar: K. Pocheć, Administrator,
having regard to the applications lodged at the Court Registry on 28 December 2007 (Case T‑493/07) and 21 January 2008 (Cases T‑26/08 and T‑27/08),
having regard to the responses lodged at the Court Registry on 11 April 2008 (Case T‑493/07) and 16 May 2008 (Cases T‑26/08 and T‑27/08),
having regard to the Order of the President of the Seventh Chamber of the Court of First Instance of 18 July 2008, joining the present cases for the purposes of the oral procedure, in accordance with Article 50 of the Rules of Procedure of the Court of First Instance,
further to the hearing on 21 January 2009,
gives the following
Judgment
Background to the dispute
1 On 30 November 2001, Serono Genetics Institute SA filed an application for registration of a Community trade mark 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 (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 sign FAMOXIN.
3 The goods for which registration was sought are in 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 for the treatment of metabolic disorders adapted for administration only by intravenous, intra-muscular or subcutaneous injection’.
4 The trade mark applied for was registered on 31 May 2005.
5 On 30 September 2005, GlaxoSmithKline SpA, Laboratórios Wellcome De Portugal Lda and The Wellcome Foundation Ltd filed three applications with OHIM for a declaration of invalidity of the Community trade mark FAMOXIN, on the basis of Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009).
6 GlaxoSmithKline relied on the earlier word mark LANOXIN, registered in Italy under No 758 074 for the following goods in Class 5: ‘pharmaceutical preparations’.
7 Laboratórios Wellcome de Portugal relied on the earlier work mark LANOXIN, registered in Portugal under No 157 610 for the following goods in Class 5: ‘pharmaceutical preparations with digoxin for human use’.
8 The Wellcome Foundation relied on the following earlier rights:
– the word mark LANOXIN under Finnish trade mark registration No 31 403 for the following goods in Class 5: ‘pharmaceutical preparations with digoxin for human use’;
– the word mark LANOXIN under Benelux trade mark registration No 63 853 for the following goods in Class 5: ‘medicinal and pharmaceutical products’;
– the word mark LANOXIN under Danish trade mark registration No VR 1989 05 795 for the following goods in Class 5: ‘pharmaceutical preparations with digoxin for human use’;
– the word mark LANOXIN under Irish trade mark registration No 59 069 for, inter alia, the following goods in Class 5: ‘medical, pharmaceutical substances’;
– the word mark LANOXIN under United Kingdom trade mark registration No 752 835 for the following goods in Class 5: ‘pharmaceutical preparations with digoxin for human use’;
– the word mark LANOXIN under Greek trade mark registration No 21 480, registered for the following goods in Class 5: ‘pharmaceutical and medical products’;
– the word mark LANOXIN under Swedish trade mark registration No 366 605 for the following goods in Class 5: ‘pharmaceutical and medical products’.
9 On 6 January 2006, Serono Genetics Institute requested proof of use of the earlier marks relied on by the applicants.
10 Following that request, on 12 April 2006, The Wellcome Foundation withdrew its reliance on the Greek registration No 21 480 and the Swedish registration No 366 605 in support of the application for cancellation.
11 By three decisions of 30 October 2006, the Cancellation Division rejected the applicants’ applications for cancellation.
12 On 21 December 2006, the applicants filed appeals pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against those decisions of the Cancellation Division.
13 By decision of 14 September 2007 (Case R 8/2007-1), the First Board of Appeal dismissed the appeal lodged by GlaxoSmithKline and upheld the Cancellation Division’s decision, stating that the earlier mark, registered in Italy under No 758 074, should be deemed to be registered for ‘pharmaceutical preparations for cardiovascular illnesses’, that is to say, a sub-category covering the goods in respect of which the earlier mark had in fact been used.
14 By decision of 20 November 2007 (Case R 10/2007-1), the First Board of Appeal dismissed the appeal lodged by Laboratórios Wellcome de Portugal and upheld the Cancellation Division’s decision, stating that the earlier mark, registered in Portugal under No 157 610, should be deemed to be registered for ‘pharmaceutical preparations with digoxin for human use for cardiovascular illnesses’, that is to say, a sub-category covering the goods in respect of which the earlier mark had in fact been used.
15 By decision of 19 November 2007 (Case R 9/2007-1), the First Board of Appeal dismissed the appeal lodged by The Wellcome Foundation and upheld the Cancellation Division’s decision, stating that the earlier marks, registered in Finland under No 31 403, in the Benelux countries under No 63 853, in Denmark under No VR 1989 05 795, in Ireland under No 59 069 and in the United Kingdom under No 752 835, should be deemed to be registered for ‘pharmaceutical preparations for cardiovascular illnesses’, that is to say, a sub‑category covering the goods in respect of which the earlier marks had in fact been used.
16 It is apparent from those three decisions that the Board of Appeal based its rejection of the applicants’ appeals, essentially, on the same reasoning.
17 First, it took the view that the goods covered by the earlier marks LANOXIN could be in the form of tablets or liquid for oral use or of an injection for the treatment of cardiovascular illnesses, while the goods covered by the Community trade mark FAMOXIN were goods intended only for injection for the treatment of metabolic disorders.
18 Next, the Board of Appeal considered that goods intended to treat metabolic disorders by injection are, in the majority of cases, used by healthcare professionals in hospitals or private clinics and that injections are generally administered by professionals. It deduced therefrom that patients would probably not see the mark under which those goods are sold. In its view, however, it is possible that some patients, such as diabetics, for example, would administer the injections themselves. In that case, the goods would nevertheless be used under the supervision of a professional. With regard to cardiovascular illnesses, the Board of Appeal stated that, since those illnesses are very serious, it must also be expected that the goods on which GlaxoSmithKline’s applications for cancellation are based are prescribed by doctors and, accordingly, used by patients under the supervision of professionals. The relevant public is therefore made up of professionals. The Board of Appeal added that the end consumers could also constitute the relevant public but that, in the present case, they would be under the guidance of professionals.
19 The Board of Appeal concluded that, although there is a certain similarity between the goods covered by the marks at issue, since they are pharmaceutical preparations, that similarity is in part offset by the fact that the end consumers are treated by different categories of physicians and that the goods covered by the marks had different therapeutic indications. The final consumers must, in such cases, be considered to have a high degree of attentiveness.
20 Furthermore, the Board of Appeal took the view that, taking into account the significant differences between the marks at issue, both visually and aurally, and the low level of conceptual similarity, the marks were only very slightly similar.
21 It concluded therefrom that there was no likelihood of confusion. In that regard, it pointed out that, in the case of the Community trade mark, the relevant public was always to be regarded as being constituted by professionals and since the general public would, in every case, be under the guidance of professionals, it could not be regarded as being required to choose between the marks at issue.
Forms of order sought by the parties
22 In Case T‑493/07, GlaxoSmithKline claims that the Court should:
– annul the decision of the Board of Appeal of 14 September 2007 (Case R 8/2007-1);
– declare the application for a declaration of invalidity well founded;
– annul all the decisions on costs taken by OHIM;
– order OHIM to pay the costs.
23 In Case T‑26/08, Laboratórios Wellcome de Portugal claims that the Court should:
– annul the decision of the Board of Appeal of 20 November 2007 (Case R 10/2007-1);
– declare the application for a declaration of invalidity well founded;
– annul all the decisions on costs taken by OHIM;
– order OHIM to pay the costs.
24 In Case T‑27/08, The Wellcome Foundation claims that the Court should:
– annul the decision of the Board of Appeal of 19 November 2007 (Case R 9/2007-1);
– declare the application for a declaration of invalidity well founded;
– annul all the decisions on costs taken by OHIM;
– order OHIM to pay the costs.
25 OHIM contends that the Court should:
– dismiss the actions;
– order the applicants to pay the costs.
Law
26 After hearing the parties’ views at the hearing, the Court decided to join the present cases for the purposes of the judgment pursuant to Article 50 of the Rules of Procedure.
27 In support of their respective actions, the applicants raise two pleas in law, alleging, on the one hand, breach of Article 56(2) and (3) of Regulation No 40/94 (now Article 57(2) and (3) of Regulation No 207/2009) and, on the other, breach of Article 8(1)(b) and of Article 52(1)(a) of Regulation No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009).
The first plea, alleging breach of Article 56(2) and (3) of Regulation No 40/94
28 GlaxoSmithKline and The Wellcome Foundation contest the finding of the Board of Appeal that the earlier marks were used for ‘pharmaceutical preparations for cardiovascular illnesses’ and not for ‘pharmaceutical preparations’.
29 Laboratórios Wellcome de Portugal contests the finding of the Board of Appeal that the earlier marks were used for ‘pharmaceutical preparations with digoxin for human use for cardiovascular illnesses’ and not for ‘pharmaceutical preparations with digoxin for human use’.
30 Essentially, the applicants submit that the sub-categories of pharmaceutical preparations accepted by the Board of Appeal according to the ‘therapeutic areas’ are arbitrary.
31 However, the Court recalls that, pursuant to Article 56(2) and (3) of Regulation No 40/94, the proprietor of a Community trade mark may require proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territory in which it is protected. Thus, if the applicant for a declaration of invalidity, having been requested to furnish proof of genuine use of the earlier mark, does not prove that it was in fact used in the market concerned, that earlier mark cannot be relied on to show the invalidity of the Community trade mark. Furthermore, if the earlier mark has been used in relation to only part of the goods or services for which it is registered, then, for the purpose of the examination of the application for a declaration of invalidity, it is to be deemed to be registered in respect of only that part of the goods or services.
32 In addition, it is apparent from the case-law relating to Article 56(2) and (3) of Regulation No 40/94 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 (Case T‑126/03 Reckitt Benckiser (España) v OHIM – Aladin(ALADIN) [2005] ECR II‑2861, paragraph 42).
33 On that view, Article 56(2) and (3) of Regulation No 40/94 seeks to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of 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 or services affords protection, in invalidity proceedings, only for the sub-category or sub-categories of goods or services for which the trade mark has actually been used. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the invalidity application (see, by analogy, ALADIN, paragraphs 44 and 45).
34 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. The Court observes in that regard 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 46).
35 In the present case, it must be noted that, as is apparent from the case-law, the category of pharmaceutical preparations is sufficiently broad for it to be possible to identify within it various sub-categories capable of being viewed independently (Case T‑483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries(GALZIN) [2006] ECR II‑4109, paragraph 28, and Case T‑256/04 Mundipharma v OHIM – Altana Pharma(RESPICUR) [2007] ECR II‑449, paragraph 26).
36 The concept of pharmaceutical preparation covers goods which are sufficiently different in their intended purpose and end consumers, according to their specific therapeutic indications, and in their channels of distribution, depending on whether they are available on medical prescription or over the counter, for it to be possible to identify within it various sub-categories (GALZIN, paragraph 28).
37 In addition, the criterion of the purpose or intended use of the product or service in question is of fundamental importance in the definition of a sub-category of goods or services, and the purpose and intended use of a therapeutic preparation are expressed in its therapeutic indication (RESPICUR, paragraphs 29 and 30).
38 It follows that, taking into consideration the therapeutic indication of the goods concerned, the Board of Appeal did not, as the applicants allege, adopt arbitrarily defined sub-categories of pharmaceutical preparations.
39 What is more, it is apparent from the OHIM files in Cases R 8/2007‑1, R 9/2007-1 and R 10/2007-1 that the applicants submitted before the Board of Appeal that the earlier trade marks ought to be regarded as having been registered in connection with cardiovascular illnesses.
40 Nevertheless, the applicants submit that it would be difficult, even for medical and pharmaceutical specialists, clearly to delimit the different ‘therapeutic areas’, in particular with regard to cardiovascular problems and metabolic disorders.
41 In support of that allegation, the applicants adduce a number of press articles.
42 Those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, and it is not to assess their probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion(ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
43 Accordingly, the Court rejects the applicant’s argument that it would be difficult, even for medical and pharmaceutical specialists, clearly to delimit the different ‘therapeutic areas’.
44 In the light of the foregoing, the first plea must be rejected as unfounded.
The second plea, alleging breach of Article 52(1)(a) of Regulation No 40/94 and of Article 8(1)(b) of Regulation No 40/94
45 By this plea, the applicants dispute the Board of Appeal’s finding that there is no likelihood of confusion between the marks at issue.
46 It should be borne in mind that, pursuant to Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) thereof and the conditions set out in Article 8(1)(b) of that regulation are fulfilled. Furthermore, pursuant to Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), to which Article 52(1)(a) expressly refers, earlier trade marks means trade marks registered in a Member State, provided that their date of application for registration is earlier than that of the Community trade mark at issue.
47 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 shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
48 According to established case-law, there is a likelihood of confusion where there is a risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the marks and of the goods or services in question, account being taken of all factors relevant to the circumstances of the case and in particular of the interdependence between the similarity of the marks and the similarity of the goods or services covered (see judgment of 16 January 2008 in Case T‑112/06 Inter-Ikea v OHIM – Waibel (idea), not published in the ECR, paragraph 32 and the case-law cited).
The relevant public
49 The applicants submit that the relevant public is composed of professionals and patients who are normally attentive and, in that regard, disputes that those patients are always under the supervision of professionals.
50 It must be borne in mind that, when the products in question are medicinal products requiring a doctor’s prescription prior to their sale to end consumers in pharmacies, the relevant public is composed not only of end consumers, but also of professionals, that is, doctors who prescribe the medicinal product and pharmacists who sell that prescribed product (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraphs 52 and 63).
51 In the present case, it must be held that, in accordance with the case-law cited above, the Board of Appeal took into account, with regard to the relevant public, both healthcare professionals and end consumers. However, the Board of Appeal took the view that the end consumers would be under the supervision of professionals.
52 That assessment must be upheld.
53 In respect of pharmaceutical preparations which are intended to treat metabolic disorders and administered by injection, the Court holds, like the Board of Appeal, that since in most cases it is professionals who administer the injection, the patient will not generally see the trade mark under which that product is sold and, in cases where the patients themselves administer the injection, they do so under the supervision of a professional. Since those goods are not available over the counter but are issued on prescription, the prior intervention of professionals is required.
54 With regard to the goods covered by the earlier trade marks which are intended to treat cardiovascular illnesses and may be administered not only by injection but also orally, the Board of Appeal was correct in noting that, having regard to the gravity of those illnesses, those goods are prescribed by a doctor. The applicants do not contest this. It follows that those goods are of necessity used by the end consumer under the supervision of a professional.
55 It should be noted, in addition, that the degree of attentiveness of the average consumer of pharmaceutical preparations must be determined on a case-by-case basis, according to the facts in the case-file, especially the therapeutic indications of the goods in question.
56 In the present case, it must be noted that the relevant public, as defined in paragraphs 52 and 53 above, will have a higher than average degree of attentiveness (see, to that effect, the judgment of 13 February 2008 in Case T‑146/06 Sanofi-Aventis v OHIM – GD Searle(ATURION), not published in the ECR, paragraph 27).
57 In that regard, it must be noted that, since the whole process of marketing the goods at issue is aimed at the end consumer’s acquisition of them, the role played by healthcare professionals must be in part balanced against the high degree of attentiveness which may be shown by those consumers when those goods are prescribed, in the light of the fact that they are pharmaceutical products, and, consequently, against those consumers’ ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences (Alcon v OHIM, paragraph 61).
58 It follows that the applicants’ argument that the relevant public has merely a normal degree of attentiveness must be rejected.
59 In addition, with regard to the complaint of The Wellcome Foundation that the Board of Appeal took into account the perception of the Italian public whereas the application for invalidity was not based on an earlier Italian trade mark, it must be noted that, in the decision of 19 November 2007 (Case R 9/2007‑1), the Board of Appeal stated, in paragraph 26, that ‘the earlier mark is registered in Italy [and] consequently, the relevant market Italian’. Nevertheless, in paragraph 3 of that decision, it is stated that the earlier trade marks are registered in Finland, the Benelux countries, Denmark, Ireland, Greece, the United Kingdom and Sweden. In addition, as OHIM has rightly pointed out, the Board of Appeal assessed the similarity of the signs without referring to specific national features and took into consideration the whole of the Community territory. It follows that the Board of Appeal examined the likelihood of confusion with regard to a public in the relevant territory. That complaint must therefore be rejected.
Comparison of the goods
60 The applicants submit that the degree of similarity between the goods at issue is high. OHIM takes the view, however, that the Board of Appeal was correct to hold that there was merely some similarity between the goods under comparison.
61 It should be borne in mind that, in accordance with case-law, in order to undertake the assessment of that similarity all the relevant factors characterising the relationship between those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Alcon v OHIM, paragraph 72).
62 In the present case, it is appropriate to note that the goods at issue are of the same type, namely pharmaceutical preparations, have the same intended purpose, namely to treat human health problems, are aimed at the same consumers, namely healthcare professionals and patients, and use the same distribution channels, namely health centres and pharmacies. They are, as the applicants submit, also potentially complementary.
63 However, the pharmaceutical preparations at issue have different therapeutic indications.
64 It is therefore irrelevant whether, as the applicants submit, patients can suffer from both illnesses at the same time and whether the treatments may be simultaneous and complementary, since the pharmaceutical preparations at issue have a specific medical use.
65 In those circumstances, it is appropriate to conclude, as the Board of Appeal correctly concluded, that there is a certain degree of similarity between the goods concerned.
Comparison of the signs
66 It must be recalled and is settled case-law that the global assessment of the likelihood of confusion must, as far as 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).
67 In the present case, the applicants submit that the visual and aural similarities, taken as a whole, exceed their minor differences. On the one hand, the presence of the element ‘oxin’ at the end of the existing trade marks does not prove that that element is not noticeable in respect of medicinal products and, on the other, the element ‘lan’ of the mark applied for is similar to the element ‘fam’ of the earlier marks. However, OHIM takes the view that the degree of similarity between the signs at issue is slight.
68 Firstly, with regard to a visual comparison of the signs, it must be noted that the trade marks at issue share the final element ‘oxin’. Nevertheless, it must be held, as the Board of Appeal held, that that ending is not out of the ordinary in the pharmaceutical field. Moreover, contrary to the applicants’ submissions, the Board of Appeal did not base that assessment on existing marks containing the final element ‘oxin’. In addition, it must be pointed out that, contrary to the applicants’ submissions, the elements at the beginning of the conflicting signs, that is to say, ‘lan’ and ‘fam’ respectively, are visually different. Consumers generally take more note of a mark’s beginning than of its ending (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). It follows that the initial element ‘lan’ of the earlier marks and the initial element ‘fam’ of the mark applied for are likely, on an overall visual impression, to have more of an impact than the final element ‘oxin’.
69 Secondly, with regard to an aural comparison of the conflicting signs, it must be noted that the pronunciation of the first syllable of the Community trade mark, namely ‘fa’, and that of the first syllable of the earlier marks, namely ‘la’, have both similarities, by reason of the presence of the vowel ‘a’, and differences, due to the distinction between the consonants ‘f’ and ‘l’. The second syllables of the marks at issue, ‘mo’ and ‘no’, will also be pronounced differently despite their common vowel ‘o’. The signs have only one syllable in common, that is to say, their final syllable ‘xin’. Moreover, decisive weighting cannot be given to the final element ‘oxin’, as OHIM correctly pointed out, since it is an element used for pharmaceutical preparations. Accordingly, the view must be taken that the first syllables of the signs at issue are likely to have a greater impact aurally than their last syllable.
70 Thirdly, with regard to a conceptual comparison of the signs, it must be noted that, even if it were to be accepted that the relevant public might link the element ‘oxin’ of the trade marks at issue to digoxin, it will be perceived as descriptive of pharmaceutical preparations. The Court thus finds, like the Board of Appeal, that the conceptual similarity must be regarded as slight.
71 Having regard to the foregoing, the Board of Appeal was correct in taking the view that the trade marks are only very slightly similar.
Likelihood of confusion
72 First of all, it must be borne in mind that the global assessment of the likelihood of confusion must be carried out objectively and cannot be influenced by considerations not connected with the commercial origin of the product. It follows that the examination of the likelihood of confusion within the meaning of that provision must concern the likelihood of confusion as to the commercial origin of the goods and not the likelihood of confusion between those goods and, with regard in particular to the end consumers, to the risk that they take one medicinal product in the place of another. Thus, any harmful consequences connected with the incorrect use of a pharmaceutical preparation arise out of the possible confusion on the part of the consumer as to the identity or characteristics of the product in question and not as to its commercial origin in accordance with the ground for refusal set out in Article 8(1)(b) of Regulation No 40/94 (see, to that effect, ATURION, paragraphs 70 and 71 and the case-law cited).
73 In the present case, it has been held, on the one hand, that the goods at issue have a certain similarity and, on the other, that the conflicting signs are only slightly similar. In addition, it has been observed that the public’s degree of attentiveness is higher than average, for both professionals and patients.
74 It is appropriate to note, on the latter point, as the Board of Appeal observed, that, in the present case, the patient will, in every case, be guided by professionals (see paragraph 52 above).
75 In those circumstances, and having regard to the facts of the present case, the overall conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark FAMOXIN come from undertakings which hold the earlier word marks LANOXIN or from an undertaking economically linked to them.
76 Thus the Board of Appeal correctly found that there is no likelihood of confusion between those marks within the meaning of Article 8(1)(b) of Regulation No 40/94.
77 Finally, it is appropriate to dismiss the applicants’ argument that the Board of Appeal refused to take into account, as a relevant fact, the contradictory position adopted by Serono Genetics Institute in a case in Sweden. In that regard, it is sufficient to recall that it is clear from settled case-law that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 40/94, as it is interpreted by the Community judicature (Case C‑488/06 P L & D v OHIM and Sämann [2008] ECR I‑5725, paragraph 58).
78 In those circumstances, the second plea must also be rejected.
79 Accordingly, the action must be dismissed.
Costs
80 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicants have been unsuccessful, they must be ordered to pay the costs in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Seventh Chamber)
hereby:
1. Joins Cases T-493/07, T-26/08 and T-27/08 for the purposes of the present judgment;
2. Dismisses the actions;
3. Orders GlaxoSmithKline SpA, Laboratórios Wellcome de Portugal, Lda and The Wellcome Foundation Ltd to pay the costs.
Forwood | Šváby | Moavero Milanesi |
Delivered in open Court in Luxembourg on 23 September 2009.
[Signatures]