JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
10 September 2008 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark astex TECHNOLOGY – Earlier Community word mark ASTEX – Ground for refusal – Likelihood of confusion – Restriction of the goods designated in the trade mark application – Article 8(1)(b) of Regulation No 40/94)
In Case T‑48/06,
Astex Therapeutics Ltd, established in Cambridge (United Kingdom), represented by M. Edenborough, barrister, and R. Harrison, solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Protec Health International Ltd, established in Cirencester (United Kingdom),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 November 2005 (Case R 651/2004-2) concerning opposition proceedings between Protec Health International Ltd and Astex Therapeutics Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of O. Czúcz, President, J.D. Cooke and I. Labucka (Rapporteur), Judges,
Registrar: K. Andová, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 17 February 2006,
having regard to the response lodged at the Court Registry on 2 June 2006,
having regard to the letters from the parties dated 15 January 2008 and 16 January 2008 in which they indicated that they would not take part in the hearing,
gives the following
Judgment
Background to the dispute
1 On 14 March 2000, the applicant, Astex Therapeutics Ltd, filed an application for a Community trade mark at 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.
2 The trade mark for which registration was sought is the figurative sign astex TECHNOLOGY, as reproduced below:
3 The goods and services for which registration was initially sought are in Classes 5, 9 and 42 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, for each of those classes, to the following description:
– Class 5: ‘Pharmaceuticals’;
– Class 9: ‘Computer software for use in relation to drug discovery; computer software for use in relation to biotechnology research’;
– Class 42: ‘Drug discovery services; biotechnology research’.
4 On 27 November 2000, that application was published in Community Trade Marks Bulletin No 94/00.
5 On 27 February 2001, the opponent, Protec Health International Ltd, filed a notice of opposition against registration of the trade mark applied for under Article 42 of Regulation No 40/94. The opposition concerned only the goods in Class 5 and was based on Article 8(1)(a) and (b) of Regulation No 40/94. The opponent relied on the existence of the earlier Community word mark ASTEX, registered on 20 April 2001 under No 548 693 for goods in Class 5 and Class 24 of the Nice Agreement corresponding, for each of those classes, to the following description:
– Class 5: ‘Insecticides for killing dust mites’;
– Class 24: ‘Textiles and textile goods; bed linen; household textiles; hypo-allergenic bed covers; all the aforesaid being impregnated with insecticide and used specifically as a means of exterminating and controlling insects found in the vicinity of human beings, but not including, as such, individual textile yarns, threads and twists’.
6 By decision of 27 May 2004, the Opposition Division rejected the opposition based on Article 8(1)(a) of Regulation No 40/94 and upheld the opposition based on Article 8(1)(b) of Regulation No 40/94 on the ground that there was a likelihood of confusion between the trade marks at issue in relation to all the goods concerned.
7 On 27 July 2004, pursuant to Article 57 to 62 of Regulation No 40/94, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division. On 16 August 2004, the applicant restricted its trade mark application to the following goods in Class 5: ‘[p]harmaceuticals, but not including cardiovascular pharmaceuticals’, pursuant to Article 44(1) of the said regulation.
8 By decision of 29 November 2005 (‘the contested decision’), the Second Board of Appeal dismissed the appeal and upheld the decision of the Opposition Division.
9 The Board of Appeal held, essentially, that, the low degree of similarity of the goods concerned was offset by the high degree of similarity of the marks at issue and that, taking into account the similar purpose and the same distribution channels of the goods, the high degree of similarity of the trade marks and the scope of protection of the earlier trade mark, the relevant public is likely to believe that the goods bearing the signs at issue come from the same undertaking or, as the case may be, from undertakings that are economically linked. The Board of Appeal took the view that there was consequently a likelihood of confusion between the trade marks on the part of the public within the Community.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– in the alternative, annul in part the contested decision;
– order the opponent to pay the costs of the proceedings before the Board of Appeal and the Opposition Division of OHIM;
– order OHIM to pay the costs.
11 The Office contends that the Court should:
– declare inadmissible the claim for annulment in part of the contested decision;
– dismiss the action as unfounded;
– order the applicant to pay the costs.
Law
Admissibility of the applicant’s claim for annulment in part of the contested decision
Arguments of the parties
12 The applicant claims, in the alternative, that the contested decision should be annulled in part if the Court confirms that there is a degree of similarity between the goods at issue, but requests that the action be upheld in respect of the goods in Class 5 corresponding to the following description: ‘Pharmaceuticals, but not including cardiovascular pharmaceuticals, and not including preparations for destroying vermin, sanitary preparations or preparations for killing dust mites’.
13 In the applicant’s view, with that restriction added to the list of goods for which registration of its mark is sought, those goods cannot under any circumstances be regarded as similar to those of the opponent. As the Opposition Division based its refusal of registration solely on Article 8(1)(b) of Regulation No 40/94, the Court should annul the contested decision in part.
14 OHIM submits that, in so doing, the applicant is not requesting a restriction of the list of goods for which registration of the mark is sought within the meaning of Article 44(1) of Regulation No 40/94, but is changing the subject-matter of the dispute, which is prohibited by Article 135(4) of the Rules of Procedure of the Court of First Instance.
15 Even if the Court construed the applicant’s request as a restriction of the list of goods, it would not be admissible because it is neither express nor unconditional, as required by the Court’s case-law. That restriction is subject to a finding by the Court that there is a similarity between the goods concerned.
16 In order for its request to be admissible, the applicant would, in OHIM’s view, have had to amend the list of goods at the latest before the close of the written procedure before the Board of Appeal.
17 OHIM therefore submits that the applicant’s claim relating to the annulment in part of the contested decision is inadmissible.
Findings of the Court
18 It must be borne in mind that the applicant for a Community trade mark may apply at any time to OHIM to restrict the list of goods or services, in accordance with Article 44(1) of Regulation No 40/94 and Rule 13 of Commission Regulation No 2868/95 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). It is clear from those provisions that a restriction of the list of goods or services designated in an application for a Community trade mark must be carried out in accordance with certain specific rules.
19 Thus, the power to restrict the list of goods or services is vested solely in the applicant for the Community trade mark who may, at any time, apply to OHIM for that purpose. In that context, the withdrawal, in whole or part, of an application for a Community trade mark must be made expressly and unconditionally (Case T‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 61).
20 The request made in the application in the present case does not conform to those rules. It was put forward only before the Court without having first been submitted to OHIM and, in addition, it is conditional inasmuch as it is subject to the prior condition that the goods concerned are found to be similar. It cannot therefore be regarded as an application to amend within the meaning of the abovementioned provisions.
21 To allow the alteration of a characteristic of the goods designated in the Community trade mark application at the stage of the action before the Court would amount to changing the subject-matter of the proceedings pending, which is prohibited by Article 135(4) of the Rules of Procedure (Case T‑458/05 Tegometall International v OHIM – Wuppermann (TEK) [2007] ECR II‑0000, paragraph 25).
22 It follows that the applicant’s head of claim seeking the partial annulment of the contested decision must be rejected as inadmissible.
Substance
23 The applicant relies, essentially, on a single plea in law alleging an infringement of Article 8(1)(b) of Regulation No 40/94. It also makes two preliminary claims.
Preliminary observations
24 First of all, the applicant claims that its action should be upheld as a result of the alleged change of ownership of the earlier trade mark, the purported dissolution of the opponent and the fact that the opponent has not submitted any evidence of the assignment of the earlier trade mark.
25 OHIM contests the applicant’s claim.
26 The Court notes that although that claim is invoked in support of the applicant’s action for annulment of the contested decision, it was raised for the first time before the Court and, moreover, is unsupported by any evidence.
27 It must be observed that the purpose of actions before the Court of First Instance under Article 63(2) of Regulation No 40/94 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 74 thereof requires that that review be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 17).
28 Moreover, it is clear from Article 135(4) of the Rules of Procedure that the parties may not change the subject-matter of the proceedings before the Board of Appeal.
29 Consequently, the Court cannot take account of the applicant’s claim.
30 Secondly, the applicant merely notes that the opponent adduced no evidence of use of its earlier trade mark such as to establish an enhanced reputation.
31 The Court notes that although this claim is invoked in support of the applicant’s claim for annulment of the contested decision, it was raised for the first time before the Court. Consequently, having regard to the observations set out in paragraphs 27 and 28 above, the Court cannot take account of this claim either.
32 For the sake of completeness, the Court points out that the opponent’s opposition was not based on Article 8(5) of Regulation No 40/94 nor on the highly distinctive nature which its earlier mark acquired through use but solely on Article 8(1)(a) and (b) of Regulation No 40/94, with the result that the opponent is not required to adduce any evidence as to the reputation of the earlier mark. In addition, only the opposition under Article 8(1)(b) was upheld by the Opposition Division and the Board of Appeal.
The sole plea in law alleging an infringement of Article 8(1)(b) of Regulation No 40/94
33 Essentially, the applicant claims that there is no likelihood of confusion in the present case. In its view, the goods and marks at issue are not similar. The applicant therefore complains that the contested decision is vitiated by an erroneous assessment as to the likelihood of confusion between the trade marks at issue. In particular, although the Board of Appeal found that the relevant consumer’s level of attention would be relatively high and that the goods in question have only a low degree of similarity, it wrongly concluded that there still existed a likelihood of confusion, on account of a high degree of similarity between the marks.
Comparison of the goods at issue
– Arguments of the parties
34 The applicant submits, first, that the pharmaceuticals covered by the trade mark applied for and the insecticides covered by the earlier mark are, by nature, different. The purpose of the former is to promote and foster the well-being of the recipient, while the objective of the latter is to exterminate insects. Accordingly, the Board of Appeal wrongly understated the dissimilarity between the goods in question by taking the view that there was a low degree of similarity between them.
35 In the assessment of the similarity between the goods in question, the most relevant factor should have been their nature. The fact that the goods are of interest to the same specific group of people and may be found in the same pharmacy should have carried minimal, if any, weight at all in the assessment of the similarity of the goods at issue.
36 Second, the applicant submits that, even though the goods in question do have a broadly similar purpose, the Board of Appeal should have taken note of the differences in their nature and in their manner of use, which are fundamental characteristics such as to set them apart from each other.
37 OHIM contests the applicant’s arguments.
– Findings of the Court
38 It must be borne in mind, first of all, that, according to settled case-law, in order to assess the similarity of the products concerned, all the relevant factors which characterise the relationship between those products should be taken into account, those factors including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case T‑85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II‑4835, paragraph 32, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 33). Other factors may also be taken into account such as 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‑ 0000, paragraph 37).
39 As held by the Board of Appeal (point 17 of the contested decision), whose assessment on this point has not been challenged by the parties, comparison of the similarity of the products must be limited, in regard to the earlier trade mark, to goods in Class 5, more specifically, ‘insecticides for killing dust mites’. Other products covered by the earlier mark are clearly different from pharmaceutical preparations.
40 Like OHIM, the Court considers that the goods concerned are, at least in part, intended for a similar purpose, namely, the prevention or treatment of a respiratory illness. Although insecticides intended to eliminate dust mites have functions other than the treatment of respiratory problems, such as the treatment of skin allergies, they are also used in treatments of allergies and thus constitute a treatment for respiratory problems caused by allergies. As such, the goods at issue are at least partially in competition with each other.
41 In addition to that similar use of the goods at issue, it must also be noted that there is a degree of complementarity between, on the one hand, insecticides intended to eliminate dust mites and, on the other, pharmaceutical preparations taken by persons suffering from respiratory problems inasmuch as such products are all the more effective if they are used in a complementary way. It must be recalled in that regard that, according to the case-law, goods 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 with the result that customers may think that the responsibility for the production of those goods lies with the same undertaking (PiraÑAM diseño original Juan Bolaños, cited above, paragraph 48).
42 It must be pointed out that the goods at issue are complementary to such an extent that the consumer would perceive a similarity within the meaning of Article 8(1)(b) of Regulation No 40/94, all the more so as they are used at least in part for the same purposes.
43 With regard to the distribution channels for the goods at issue, it should be noted that, as the Board of Appeal pointed out in the contested decision, the goods at issue can be sold in pharmacies. In pointing out, correctly, that the restriction of the factual basis of the examination by OHIM does not preclude it from taking into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 29), the Board of Appeal could rightly consider that even though pharmacies no longer sell just pharmaceuticals, what they offer is generally still limited to various health, beauty and personal care products.
44 In conclusion, it must be held that there is, in the present case, a low degree of similarity between the goods at issue, arising in particular from the fact that they are to a certain extent complementary and their intended use is at least partly similar.
45 Consequently, and in so far as the applicant merely invokes the fundamental importance of a difference in the nature and way of using the goods at issue, it has not shown to the requisite legal standard that the Board of Appeal committed an error of assessment in concluding that there was a low degree of similarity between the goods at issue.
Comparison of the signs at issue
– Arguments of the parties
46 The applicant criticises the Board of Appeal, in essence, first for having failed to consider the trade marks at issue as a whole and for having broken them down into their component parts, and, second, for having given weight to a dominant element to the detriment of the other components of the trade mark applied for when it made the visual, phonetic and conceptual comparisons of the trade marks.
47 As regards visual comparison, the applicant argues that the distinctive character of a mark results from the combination of all of its component parts, including the smaller contributions made by individually non-distinctive components. In the present case, the mark applied for has at least several noticeable component parts, namely the words ‘astex technology’ and a figurative element. Therefore, the distinctive character of the mark applied for follows from a combination of those parts to form a composite whole. The Board of Appeal therefore committed a manifest error of assessment in taking the view that the word ‘astex’ is the dominant element in the trade mark applied for.
48 As regards phonetic comparison, the applicant submits that the Board of Appeal truncated the trade mark applied for in taking the view that the word ‘technology’ was likely to be omitted when the sign is referred to orally. The Board of Appeal therefore overlooked that component when comparing the trade marks phonetically. The phonetic differences between the trade marks are, however, significant. The earlier trade mark thus has only two syllables, with the emphasis upon the first syllable, while the trade mark applied for has six syllables and the emphasis falls upon the third syllable owing to the distinctive catenation of the hard sounds ‘tex’ and ‘tech’.
49 As regards, finally, conceptual comparison, the applicant complains that the Board of Appeal did not take the figurative element into consideration. While the applicant accepts that such a figurative element might be difficult to put into words, that does not mean that it has no conceptual influence, as is demonstrated by the effect upon the mind and the senses of some forms of abstract art. The Board of Appeal thus artificially diminished the conceptual force of the trade mark applied for, and so made a false comparison with the earlier mark.
50 In conclusion, the applicant submits that the Board of Appeal wrongly found that the trade marks at issue have a high degree of similarity.
51 OHIM considers that the applicant’s arguments are unfounded.
– Findings of the Court
52 It must be pointed out first of all that, when a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be regarded as dominant.
53 A compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 33).
54 It is also clear from the case-law that a trade mark made up of several components (a compound mark) must, for the purposes of assessing its distinctive character, be considered as a whole (Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 22) and that, in that regard, the word element can hold a position equivalent to the figurative element (Case T‑110/01 Vedial v OHIM – France Distribution (HUBERT) 2002] ECR II‑5275, paragraph 53).
55 In addition, even in circumstances where two marks are composed of similar word elements, that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (Case T‑3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraph 48).
56 In the present case, the trade mark applied for is a compound mark composed of word and figurative elements. One of the word elements, namely the word ‘astex’, is identical to the earlier word mark ASTEX.
57 From a visual point of view, with regard to whether the word ‘astex’ is likely on its own to dominate the image of the trade mark which the relevant public will recall and thus constitute the dominant element of the mark applied for, it must be pointed out that it occupies a central position in that mark and that the letters composing it are significantly larger than those employed for the word ‘technology’. The Court agrees with the analysis of the Board of Appeal that the word element ‘technology’ in the mark applied for, written in much smaller typeface, will not attract consumers’ attention. Although it is true that the figurative element representing a stylised letter ‘a’ is placed very visibly on the left of the sign applied for, it does not, however, seem likely to attract the consumer’s attention to the point that he would recall it. It is unlikely that the relevant public would notice in all cases that this figurative element represents the letter ‘a’ since the image is stylised and could be confused with a triangle or an object in the form of a pyramid, all the more so as the letter ‘a’ of the word element ‘astex’ is also present in the word element of the mark applied for and thus seems redundant. In addition, the letter ‘a’, stylised in triangular form and presented in the middle of a circle, is not a special or original configuration which could lead to the identical nature of the common word element dominating the two marks being reduced to such an extent that the overall impression provided by each sign is different. Consequently, the word element ‘technology’ and the letter ‘a’ must be regarded as negligible.
58 From a phonetic point of view, it is clear that the stylised letter ‘a’ will not be spoken and can thus not serve to identify phonetically the goods on which the trade mark appears. In addition, the word ‘technology’ is very widely used in trade marks registered in the European Community, particularly in company names, in the same way as ‘international’ or ‘global’. Consequently, it is probable that it will also not be pronounced by the relevant public. Those two elements are therefore negligible. The result is that the word element ‘astex’ will also dominate, on a phonetic level, the image of the mark which the relevant public, that is to say, the average consumer in the European Community, will recall.
59 Finally, with regard to the assessment of conceptual similarity, it is true, as the applicant claims, that the Board of Appeal did not take account of the conceptual value of the stylised element in the figurative mark applied for. The Board of Appeal merely denied the semantic value of the term ‘astex’ and denied that the word ‘technology’ had a distinctive character.
60 The Board of Appeal’s analysis is none the less well founded. The concept of technology, to which the word element ‘technology’ refers, is commonly defined very broadly, as meaning the development and perfection of methods permitting the effective use of various techniques with a view to making production, consumption and information mechanisms function. It is thus certain that, in regard to all the goods covered by the trade mark application, the reference to technology is not of such a nature as to give the mark applied for a distinctive character.
61 Similarly, as the Board of Appeal rightly states, the word ‘astex’ does not have a meaning in any of the languages of the European Community, something which the applicant does not contest.
62 Only the stylised element could call into question the conceptual similarity of the signs at issue. It is sufficient to note, in that regard, that the significance of that element is far from clear, inasmuch as it may be regarded as a stylised letter ‘a’ or, equally, as a triangle or an object in the form of a pyramid. Moreover, the applicant does not express a view as to the significance to be accorded to the figurative element.
63 Consequently, the signs at issue must be regarded as being very similar overall.
Existence of a likelihood of confusion
– Arguments of the parties
64 The applicant submits that the existence of a likelihood of confusion is reduced by the fact that the goods covered by the application and the earlier trade mark respectively can be marketed in the same pharmacy. The Board of Appeal overlooked the fact that this would reduce the likelihood of imperfect recollection of the trade marks in question, either because the goods in question could be placed side by side or because the gap in time between seeing one product and the other would be significantly reduced.
65 Furthermore, the applicant agrees with the Board of Appeal’s conclusion that the consumer’s level of attention is relatively high for the type of goods in question. However, it draws entirely different inferences from this. It takes the view that, owing to the high degree of attention that the consumer will give to any prospective purchase, the differences between the trade marks in question will make the consumer stop and think. Thus, a different font might be sufficient to avoid the likelihood of confusion, because consumers are alive to the precision with which traders use their trade marks, and the care that traders take over every aspect of a trade mark, even down to the detail of the style of lettering.
66 OHIM rejects the applicant’s arguments.
– Findings of the Court
67 According to settled case-law, there is a likelihood of confusion where the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings.
68 Also according to the case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods and services at issue, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and that of the goods or services. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case T‑156/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO AIRE) [2003] ECR II‑2789, paragraphs 30 to 32 and the case-law cited therein).
69 It must also be pointed out that the global assessment must be carried out objectively and cannot be influenced by considerations that are unrelated to the commercial origin of the goods in question, such as any harmful consequences linked to the incorrect use of a pharmaceutical product or, in the present case, an insecticide. Any such consequences result from possible confusion on the part of the consumer as regards the identity or characteristics of the goods at issue and not as regards their commercial origin in the sense of the ground for refusal laid down in Article 8(1)(b) of Regulation No 40/94 (Case T‑202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraphs 31 and 32).
70 In the present case, bearing in mind the distinctive character of the earlier mark resulting from the use of an original term which has no precise meaning in any language of the European Community, something which the applicant does not contest, the Board of Appeal rightly considered that the high degree of similarity between the signs at issue was such as to offset the low degree of similarity between the goods at issue.
71 In particular, the similar intended purpose of the products, both of which are of interest to persons suffering from respiratory problems related to allergic reactions to dust mites, and the high degree of similarity between the marks at issue, justify the Board of Appeal’s assessment that the relevant public is likely to believe that the goods bearing the signs at issue come from the same undertaking or from undertakings that are economically linked.
72 In the light of the foregoing, it must be held that the Board of Appeal was right to conclude that there was a likelihood of confusion between the two marks at issue.
73 The applicant’s argument, in the alternative, that the fact that the goods at issue have the same distribution channels, namely pharmacies, and may be placed side by side there results in a reduction of the likelihood of confusion must be regarded as unfounded.
74 First, as OHIM contends, pharmaceuticals are very rarely visible from the counter, unlike the non-pharmaceutical (though health-related) goods – like the goods protected by the earlier mark – which are sold on get-ups that are directly visible and accessible to the customers. Second, in so far as the dominant element in the signs at issue is the word element ‘astex’, it cannot be accepted that the sight of those goods would not give rise to the likelihood of confusion as regards their commercial origin. From a visual and, in particular, phonetic, point of view, the fact that that word element is identical makes confusion likely since the goods are intended, at least in part, for a similar purpose, as has been pointed out in paragraph 40 above, and concern, in part, the same relevant public.
75 Finally, with regard to the applicant’s argument that the high degree of attention which consumers pay to these goods is such as to reduce the likelihood of confusion, it is sufficient to note, as OHIM does, that the applicant does not conclude therefrom that all likelihood of confusion is excluded.
76 In addition, even if that argument could have some merit with regard to an earlier, known mark with a highly distinctive character, that is not the case in regard to the earlier mark at issue, which is not so well known that the consumer, even if paying a high degree of attention, would distinguish the mark applied for merely on the basis of a different typeface.
77 It follows from the foregoing that the sole plea in law put forward by the applicant must be rejected.
78 The action must therefore be dismissed in its entirety.
Costs
79 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 COURT OF FIRST INSTANCE (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Astex Therapeutics Ltd to pay the costs.
Delivered in open court in Luxembourg on 10 September 2008.