JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
21 October 2008 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark PRAZOL – Earlier national word mark PREZAL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Case T‑95/07,
Aventis Pharma SA, established in Antony (France), represented by R. Gilbey, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen, and subsequently by Ó. Mondéjar Ortuño, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Nycomed GmbH, formerly Altana Pharma AG, established in Constance (Germany), represented by A. Ferchland, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 8 February 2007 (Case R 302/2005-4), relating to opposition proceedings between Altana Pharma AG and Aventis Pharma SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska‑Białecka, Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 30 March 2007,
having regard to the response of OHIM lodged at the Registry of the Court on 5 July 2007,
having regard to the response of the intervener lodged at the Registry of the Court on 25 July 2007,
further to the hearing on 13 May 2008,
gives the following
Judgment
Background to the dispute
1 On 28 April 1999, Byk Gulden Lomberg Chemische Fabrik GmbH, subsequently Altana Pharma AG and now the intervener, Nycomed GmbH, filed an application for registration of 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 mark in respect of which registration was sought is the word mark PRAZOL.
3 The goods in respect of which registration was sought fall within 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 description ‘Medicines’.
4 The application was published in issue No 104/99 of the Bulletin of Community Trade Marks of 27 December 1999.
5 On 27 March 2000, Hoechst Marion Roussel SA, now the applicant, Aventis Pharma SA, filed a notice of opposition to registration of the trade mark applied for under Article 42 of Regulation No 40/94. The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94. The opposition was based on the word mark No 526061, PREZAL, registered on 12 February 1993 at the Benelux trade mark office and covering ‘pharmaceutical, veterinary and hygienic products’, falling within Class 5 of the Nice Agreement.
6 By decision of 1 August 2002, the Opposition Division dismissed the opposition on the ground that the applicant had not proved sufficient use of the earlier mark.
7 By letter of 16 September 2002, the intervener requested OHIM to amend the description of the goods covered by the mark applied for so that they correspond to the description ‘Medicines, excluding veterinary products’.
8 On 1 October 2002, the applicant appealed against the decision of the Opposition Division.
9 By decision of 26 February 2004, the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division on the ground that it had not taken into consideration all the facts, evidence and arguments submitted by the parties, and remitted the case to the Opposition Division.
10 By decision of 26 January 2005, the Opposition Division upheld the opposition (‘decision of the Opposition Division of 26 January 2005’). In that decision it found, essentially, that there was a likelihood of confusion having regard to the identical nature of the goods concerned and the strong similarity between the conflicting marks.
11 On 18 March 2005, the intervener appealed to OHIM against the decision of the Opposition Division of 26 January 2005, pursuant to Articles 57 to 62 of Regulation No 40/94.
12 By decision of 8 February 2007 (‘the contested decision’), the Fourth Board of Appeal annulled the decision of the Opposition Division of 26 January 2005. Having pointed out that the goods in question were identical and that the relevant public consisted of end-consumers and medical professionals who were likely to be relatively observant, the Board of Appeal found that there was no likelihood of confusion between the marks in question, in so far as they have no particular meaning and the clear phonetic difference between them outweighs their low level of visual similarity.
Forms of order sought by the parties
13 The applicant claims that the Court should:
– annul the contested decision;
– uphold the decision of the Opposition Division of 26 January 2005;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– hold that the trade mark should be registered;
– order the applicant to pay the costs.
16 At the hearing, the applicant withdrew its second head of claim, a fact of which the Court took formal notice.
17 Also at the hearing, the intervener withdrew its second head of claim, a fact of which the Court likewise took formal notice.
Law
18 As a preliminary point it should be noted that the applicant submitted, at the request of the Court, under the second and third sentences of Article 35(3) of its Rules of Procedure, the translation into the language of the case of an extract from the trademarks register of the Benelux trade mark office; this was annexed to its application and shows that the applicant is the proprietor of the mark PREZAL and that registration of that mark expires on 12 February 2013. Therefore, the intervener’s argument that the applicant has not established that it is the proprietor of the earlier mark and that the registration of that mark is still valid must be dismissed as unfounded.
19 In support of its action, the applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
20 The applicant claims, in essence, that there is a likelihood of confusion between the marks in dispute.
21 OHIM and the intervener counter, essentially, that the Board of Appeal was correct to find that there was no likelihood of confusion between the signs in question.
22 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 earlier trade mark and the trade mark applied for 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.
23 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 perception that the relevant public has of the signs and of the goods or 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 the similarity of the goods or services covered (Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 31 to 33 and case-law cited).
The relevant public
24 The applicant contests, in essence, the Board of Appeal’s assessment, with which OHIM and the intervener concur, that the relevant public is likely to display an above-average degree of attention.
25 According to the case-law, in the global assessment of the likelihood of confusion account should be taken of the average consumer of the category of products 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
26 In the present case, since the earlier mark was registered at the Benelux trade mark office, the Board of Appeal correctly found that reference must be made to the perception of the public in the Benelux countries for the purposes of the application of Article 8(1)(b) of Regulation No 40/94; that finding is not disputed by the parties.
27 Moreover, it follows from the case-law that, where the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as end-consumers of those goods, on the other (judgment of 13 February 2008 in Case T‑146/06 Sanofi-Aventis v OHIM – GD Searle (ATURION), not published in the ECR, paragraph 25), as the Board of Appeal correctly found in the contested decision and as is not contested by the parties.
28 Regarding the level of attention of the relevant public, the applicant contests the Board of Appeal’s assessment that end-consumers, who are part of the targeted public, are likely to exercise a ‘relatively high degree of attention’ and must be deemed to be ‘rather attentive and observant and to readily notice any significant difference between the particular names of the pharmaceutical preparations at issue’.
29 First, as noted in the case-law, medical professionals display a high degree of attention when prescribing medicinal products. Second, with regard to end-consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products (see, to that effect, Case T‑202/04 Madaus v OHIM – Optima Healthcare (ECHINAID) [2006] ECR II‑1115, paragraph 33). Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products (ATURION, paragraph 27).
30 Therefore, the Board of Appeal was correct in finding that the relevant public is likely to display an above average level of attention.
31 In that regard, the applicant’s argument that the level of attention of end-consumers is no higher when they buy medicines than when they buy other products and that OHIM failed to comply with its obligation to enquire whether or not the products were available on medical prescription only must be rejected. It need merely be noted, in that regard, that for the reasons given in paragraph 29 above, the relevant public is in all events likely to display an above-average level of attention. The applicant’s argument that it is not clear from the contested decision what level of attention the Board of Appeal attributes to the end-consumer must also be rejected. The findings made in the contested decision in that regard, which are set out in paragraph 28 above, indicate unambiguously that the Board of Appeal considered that end-consumers of medicinal products were likely to display a level of attention which is above the average.
32 It is not necessary to examine the documents submitted by the intervener with a view to establishing that the goods sold bearing the earlier mark are available exclusively on medical prescription, because – apart from the fact that those documents are not such as would change the conclusion in paragraph 30 above – actions before the Court are for review of the legality of the decisions of the Boards of Appeal of OHIM, in accordance with Article 63 of Regulation No 40/94, so that it is not the function of the Court to re-examine the facts in the light of documents produced before it for the first time (Case T‑10/03 Koubi v OHIM – Flabesa (CONFORFLEX) [2004] ECR II‑719, paragraph 52; T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 52; Case T-396/02 Storck v OHIM (Shape of a sweet) [2004] ECR II‑3821, paragraph 24; and Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 29).
Comparison of the goods
33 The intervener contests the Board of Appeal’s assessment, with which the applicant and OHIM concur, that the goods in question are identical. The intervener argues in that regard that it is improbable that the marks in question would appear on identical or even similar goods, since the applicant has demonstrated use of the earlier mark only with regard to a specific category of medicines, namely gastro-intestinal preparations.
34 First, in so far as the intervener’s argument contesting the Board of Appeal’s finding that the goods in question are identical is to be understood as an independent plea in law based on Article 134(2) of the Rules of Procedure, it should be pointed out that that plea is incompatible with the form of order it is seeking and must be rejected, since the intervener has not applied for the annulment or alteration of the contested decision under Article 134(3) of the Rules of Procedure (see, to that effect, judgment of 16 November 2006 in Case T‑278/04 Jabones Pardo v OHIM – Quimi Romar (YUKI), not published in the ECR, paragraphs 44 and 45, and Joined Cases T‑57/04 and T‑71/04 Budějovický Budvarand Anheuser-Busch v OHIM (AB GENUINE Budweiser KING OF BEERS) [2007] ECR II‑1829, paragraph 220).
35 Second, and in any case, it follows from the case-law that, where the goods covered by the earlier mark include the goods covered by the mark applied for, those goods are regarded as identical (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 32 and 33). Therefore, given that it is not disputed that the goods covered by the mark applied for are included in the goods covered by the earlier mark, the Board of Appeal correctly held that the goods in question are identical.
Comparison of the signs
36 The applicant contests the Board of Appeal’s assessment that there is no similarity between the signs in question. OHIM and the intervener argue, respectively, that there is a ‘low degree’ of similarity, or ‘no similarity’, between those signs.
37 According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and case-law cited).
38 In the present case, the marks in question are the earlier word mark PREZAL and the word mark PRAZOL, the registration of which is sought.
39 With regard to the visual aspect, the applicant contests the Board of Appeal’s finding, with which OHIM concurs, that the signs in dispute display ‘a low level of visual similarity’ or ‘a certain level of similarity’. The intervener argues that the signs in question differ distinctively.
40 In that regard, it should be pointed out, first, that the marks in question each consist of a single word made up of two syllables, namely ‘pre’ and ‘zal’ for the earlier mark and ‘pra’ and ‘zol’ for the mark sought. In addition, the marks concerned have the same number of letters, namely six, five of which are identical and four of which appear in the same order, starting with the letters ‘p’ and ‘r’, with the letter ‘z’ in the middle of the marks in dispute and the letter ‘l’ at the end.
41 In addition, contrary to what is asserted by the intervener and OHIM, the existence of different vowels in the earlier mark – ‘e’ and ‘a’ – and in the mark applied for – ‘a’ and ‘o’ – is not sufficient to cancel out the impression of similarity on the one hand created by the identical consonants placed in the same order – ‘p’, ‘r’, ‘z’ and ‘l’ – in the two marks, between which are inserted the abovementioned vowels, and on the other hand deriving from the fact that one of those vowels – ‘a’ – is common to the two marks.
42 Therefore, the similarities between the earlier mark and the mark applied for outweigh the dissimilarities between those marks, so that, on an overall visual assessment, those signs are very similar.
43 That conclusion cannot be invalidated by the intervener’s argument that, in the case of short marks, where every letter is important, a difference in one letter can modify the perception of those marks. It follows from the case-law that, in respect of word marks which are relatively short, the central elements are as important as the elements at the beginning and end of the sign (Case T‑273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II‑1271, paragraph 39).
44 With regard to the OHIM decisions relied upon by the intervener in support of its arguments, it need only be pointed out that, in any case, they cannot call into question the findings set out in paragraphs 40 and 41 above. It follows from the case-law that decisions concerning registration of a sign as a Community mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community courts, and not on the basis of a previous practice of the Boards of Appeal (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 66; Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 32; Joined Cases T‑324/01 and T‑110/02 Axions and Belce v OHIM(Brown cigar shape and gold ingot shape) [2003] ECR II‑1897, paragraph 51).
45 The Board of Appeal was therefore wrong in finding that there was only ‘a low level of visual similarity’ or ‘a certain level of similarity’ between the marks in dispute from a visual point of view.
46 With regard to the phonetic aspect, the applicant contests the Board of Appeal’s assessment that they are ‘dissimilar from a phonetic point of view’ as ‘their vowels, which are the main and phonetic elements characterising the basic sound structure of the words, are unmistakably different’. OHIM and the intervener concur with the assessment of the Board of Appeal in that regard.
47 Firstly, apart from the fact that the signs in dispute have the same number of syllables, as was pointed out in paragraph 40 above, the first and second syllables of each of those signs, that is ‘pre’ and ‘pra’ on the one hand, and ‘zal’ and ‘zol’ on the other, begin with the same characteristic sounds made by the letters ‘p’ and ‘r’ taken together and by the letter ‘z’, and the second syllables of each of the signs end with the sound produced by the letter ‘l’.
48 Secondly, if the sequence of vowels ‘e’ and ‘a’ in the earlier mark and ‘a’ and ‘o’ in the mark applied for give rise to different sounds, those are nevertheless cancelled out by the fact that (i) those vowels are part of an identical sequence of consonants – ‘p’, ‘r’, ‘z’ and ‘l’ – (ii) the vowel ‘a’ is common to the two signs at issue and (iii) the sounds made by the two syllables at issue, that is ‘pra’ and ‘pre’, and ‘zal’ and ‘zol’, are very similar.
49 In the light of those considerations, the phonetic similarities between the signs in dispute outweigh the dissimilarities between them, so that, on an overall assessment, the signs are very similar.
50 The Board of Appeal was accordingly wrong in finding that there was a clear phonetic difference between the signs in question.
51 On a conceptual level, OHIM contests the Board of Appeal’s assessment, with which the applicant and the intervener concur in their written pleadings, that, in essence, neither of the marks in dispute has a particular meaning. OHIM maintains that PRAZOL, the mark applied for, refers to the omeprazol family of medicines, which inhibit gastric secretion, and that it is conceivable that the relevant public will identify the International Non-proprietary Name for the active ingredient lansoprazole.
52 Even assuming that the meaning of the earlier mark PREZAL or of the mark applied for, PRAZOL, is clear to medical professionals, on the basis that one or other of them refers either to the active ingredient lansoprazole – as the applicant conceded with regard to the earlier mark when replying to the Court’s questions at the hearing and as is apparent from the documents submitted in the proceedings before OHIM – or to the omeprazol family of medicines, it is neither proved nor probable that end-consumers, who form part of the relevant public and whose level of knowledge is certainly above average but who nevertheless have limited knowledge of medical terminology, understand either meaning to which the earlier mark or the mark applied for refers.
53 Therefore, the Board of Appeal was correct when it found that neither of the signs in dispute means anything to the end-consumers who form part of the relevant public.
54 In the light of the foregoing, it must be held, taking an overall view, that having regard, first, to the strong visual and phonetic similarity between the signs in dispute and, second, to the fact that no meaning can be attributed to them which would enable end-consumers to distinguish between them, those signs are very similar.
Likelihood of confusion
55 The applicant disputes the Board of Appeal’s assessment that, given the fact that the relevant public must be deemed to be relatively attentive and that there is a clear phonetic difference between the signs in question, which outweighs their low level of visual similarity, it is unlikely that the relevant public would consider that the goods in question come from the same undertaking or from economically-linked undertakings, with the result that there is no likelihood of confusion between the signs in dispute.
56 In that regard, it should be pointed out that the finding that there was no likelihood of confusion, reached by the Board of Appeal in paragraph 12 of the contested decision, is based on a false premiss, namely that there are significant phonetic differences between the signs which outweigh the low degree of visual similarity between the marks in dispute. That assessment cannot however be accepted, since, as pointed out in paragraphs 42, 49 and 52 above, the signs in dispute are visually and phonetically very similar. The fact that the relevant public consists of end-consumers amongst others, whose level of attention can be considered to be above average, is not sufficient, given the identical nature of the goods concerned and the similarity of the signs in dispute, to rule out the possibility that those consumers might believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings.
57 Accordingly, and contrary to the finding in the contested decision, a likelihood of confusion on the part of the relevant public cannot be ruled out in the present case.
58 Therefore, the single plea in law raised by the applicant must be accepted and the contested decision annulled.
Costs
59 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 OHIM has been unsuccessful, in so far the contested decision is to be annulled, it should be ordered to pay the applicant’s costs, as applied for by the latter. The intervener, too, having been unsuccessful, it must bear its own costs, in accordance with the third subparagraph of Article 87(4) of the Rules of Procedure.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 February 2007 (Case R 302/2005‑4);
2. Orders OHIM to bear its own costs and to pay those incurred by Aventis Pharma SA;
3. Orders Nycomed GmbH to bear its own costs.
Tiili | Dehousse | Wiszniewska-Białecka |
Delivered in open court in Luxembourg on 21 October 2008.