CELEX: 62004TJ0202
Community trade mark
Opposition proceedings
Earlier international word mark ECHINACIN
Application for the Community word mark ECHINAID
Absolute ground for refusal
Article 8(1)(b) of Regulation (EC) No 40/94

Background to the dispute
On 19 May 2000 Optima Healthcare Ltd filed an application for a Community trade mark with the Office for Harmonisation in
the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on
the Community Trade Mark (OJ 1994 L 11, p. 1), as amended.
The mark in respect of which registration was sought is the word sign ECHINAID.
The goods in respect of which registration of the mark 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 following description: ‘vitamins, food supplements, herbal preparations, pharmaceutical
and medical preparations’.
On 18 December 2000 the application was published in
Community Trade Marks Bulletin
No 101/2000.
On 16 March 2001 Madaus AG, the holder of the international trade mark ECHINACIN (effective in Spain, France, Italy, Austria,
Portugal and the Benelux Countries), for goods in Class 5 described as ‘chemical pharmaceuticals’, filed a notice of opposition
against the registration of the mark applied for in respect of all of the goods listed in the application. It submitted that
there was a likelihood of confusion between the two marks within the meaning of Article 8(1)(b) of Regulation No 40/94.
By decision of 15 July 2002 OHIM’s Opposition Division rejected the opposition on the ground, essentially, that there was
no likelihood of confusion since the prefix ‘echina-’, referring to the name of the plant ‘Echinacea’, had to be regarded
as having descriptive character. Consequently, the fact that the two marks have the same prefix was not enough, in the view
of the Opposition Division, for it to conclude that there was a likelihood of confusion.
On 20 August 2002 the applicant filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94, against
the decision of the Opposition Division.
By decision of 30 March 2004 (‘the contested decision’), notified to the applicant the following day, the Second Board of
Appeal dismissed the appeal. It considered that there was no likelihood of confusion between the two marks on the ground,
essentially, that the average consumer, who was reasonably well informed, reasonably observant and used to products containing
the prefix ‘echina-’, was likely to pay more attention to the endings of the marks rather than to the descriptive prefix ‘echina-’,
which is insufficiently distinctive.
Upon hearing the report of the Judge-Rapporteur, the Court (First Chamber) decided to open the oral procedure and set the
date of the hearing for 20 September 2005. The parties did not attend. The report for the hearing, which was sent to the parties,
did not give rise to any observations from them.

Forms of order sought
The applicant claims that the Court of First Instance should:
–        recognise that OHIM erred in law in the contested decision;
–        annul that decision;
–        order OHIM to issue another decision refusing to register the trade mark applied for, on account of the likelihood of confusion
within the meaning of Article 8(1)(b) of Regulation No 40/94.
OHIM claims that the Court of First Instance should:
–        dismiss the application;
–        order the applicant to pay the costs.

Admissibility of the applicant’s heads of claim
In its third head of claim the applicant is effectively requesting the Court to issue a direction to OHIM to refuse registration
of the mark applied for.
The admissibility of an action and the forms of order sought therein is an issue of public policy which may be raised by the
Court of its own motion; its review is not confined to the objections of inadmissibility raised by the parties (Case 294/83
Les Verts
v
Parliament
[1986] ECR 1339, paragraph 19; Case T-130/89
B.
v
Commission
[1990] ECR II-761, summary publication, paragraphs 13 and 14; and Case T-99/95
Stott
v
Commission
[1996] ECR II-2227, paragraph 22).
Under Article 63(6) of Regulation No 40/94, OHIM is required to take the measures necessary to comply with judgments of the
Community Courts. Accordingly, it is not for the Court of First Instance to issue directions to OHIM. It is for the latter
to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (Case T-331/99
Mitsubishi HiTec Paper Bielefeld
v
OHIM
(Giroform)
[2001] ECR II-433, paragraph 33; Case T-34/00
Eurocool Logistik
v
OHIM
(EUROCOOL)
[2002] ECR II-683, paragraph 12; Case T-129/01
Alejandro
v O
HIM
–
Anheuser-Busch
(BUDMEN)
[2003] ECR    II-2251, paragraph 22; and Case T-164/03
Ampafrance
v
OHIM
–
Johnson & Johnson
(monBeBé)
[2005] ECR II-0000, paragraph 24).
The applicant’s third head of claim is therefore inadmissible.
The applicant’s first and second heads of claim, seeking annulment of the contested decision, are admissible.

Substance
In support of its action the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation
No 40/94 and manifest errors of assessment. That plea is divided into five parts.

First part, concerning erroneous determination of the relevant territory and public
Arguments of the parties
The applicant complains that, in the contested decision, the Board of Appeal assessed the likelihood of confusion, first,
by taking the English public into account, even though English territory is not relevant in the present proceedings, and second,
by referring only to a specialised public (pharmacists and doctors), even though the relevant public also includes ‘end consumers’,
who are ‘average consumers’.
In that regard, the applicant refers to a decision of the First Board of Appeal of 3 November 2003 (R 67/2003-1) in which
OHIM stated that the attention paid by the average consumer when buying non-prescription medicine for mild disorders (e.g.
dietetic problems) will not, when purchasing such goods, be very high. The applicant therefore concludes that there is a likelihood
of confusion on the part of the average consumer in the present case.
OHIM responds that the Board of Appeal did not consider the United Kingdom to be the relevant territory since it states, on
the contrary, that the relevant territories are Spain, France, Italy, Austria, Portugal and the Benelux countries (paragraphs
20 and 23 of the contested decision), nor did it base its analysis on the perception of a public composed of specialists.
Rather, the Board referred to the view of the average consumer of the goods in question (paragraph 23 of the contested decision).
Findings of the Court
This first part of the plea has no factual basis, in so far as it makes allegations that are contradicted by the express terms
of the contested decision. First, in paragraphs 20, 21 and 23 of the contested decision, the Board of Appeal expressly points
out that the six relevant territories are Spain, France, Italy, Austria, Portugal and the Benelux countries. It identifies
the public in the territories in question as the reference public for the purposes of the assessment of the likelihood of
confusion.
Contrary to the applicant’s submissions, the Board of Appeal did not base its assessment in that regard on evidence concerning
the meaning of the word ‘Echinacea’ for the English-speaking public. It is true that in paragraph 18 of the contested decision
the Board of Appeal referred to two definitions of the word in question taken from English dictionaries, but only in the context
examining its Latin etymology. It concluded merely that it was the scientific name of a plant used in several languages, including
those used by the public in the six reference territories.
Secondly, it is also apparent from paragraph 23 of the contested decision that the Board of Appeal did not consider the relevant
public to be restricted to a specialist public composed of pharmacists and doctors. On the contrary, it referred expressly
to the average consumer of the type of goods in question, namely medicinal plants and other pharmaceutical products, who is
deemed to be reasonably well informed, observant and circumspect. That is therefore not a specialist public.
As regards OHIM’s allegedly divergent practice in decisions, it must be pointed out that the legality of decisions of the
Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, as interpreted by the Community judicature,
and not OHIM’s practice in its earlier decisions (see Case T-117/02
Grupo El Prado Cervera
v
OHIM
–
Debuschewitz heirs
(CHUFAFIT)
[2004] ECR II-0000, paragraph 57, and the case-law cited).
Consequently, the first part of the plea must be dismissed.

Second part, concerning the application of a special criterion for the purposes of assessing likelihood of confusion due to
the specific characteristics of pharmaceutical products
Arguments of the parties
The applicant points out that the products in dispute are in part identical and in part similar. ‘Pharmaceutical and medical
preparations’ covered by the mark ECHINAID are products identical to ‘chemical pharmaceuticals’ referred to by the mark ECHINACIN,
while ‘vitamins, food supplements, herbal preparations’ protected by the former mark are similar. It considers that since
a mistake in the choice of a pharmaceutical product could have serious health consequences, the criterion for evaluating likelihood
of confusion should be much stricter than for other goods and services.
OHIM objects that the purpose of the ground for refusal based on the likelihood of confusion, set out in Article 8(1)(b) of
Regulation No 40/94, is to protect private rights, namely the exclusive rights conferred by the earlier trade mark. Consequently,
dangers which might result from possible confusion cannot be taken into account for the purpose of determining whether there
is a likelihood of confusion.
Findings of the Court
Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied
for is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity
of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the
territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association
with the earlier trade mark.
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 (Case
T-31/03
Sada
v
OHIM
–
Sadia
(GRUPO SADA)
[2005] ECR II-0000, paragraph 42, and Case T-126/03
Reckitt Benckiser
(España)
v
OHIM
–
Aladin
(ALADIN)
[2005] ECR II-0000, paragraph 78).
According to the same line of case-law, the likelihood of confusion on the part of the public must be assessed globally by
reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into
account all factors relevant to the circumstances of the case (see
GRUPO SADA
, paragraph 29 above, paragraph 43, and
ALADIN
, paragraph 29 above, paragraph 79, and the case-law cited).
The global assessment referred to in paragraph 30 above must be carried out objectively and cannot be influenced by considerations
that are unrelated to the commercial origin of the goods in question.
Any harmful consequences linked to the incorrect use of a pharmaceutical product result from possible confusion on the part
of the consumer as regards the identity or characteristics of the good 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.
In any case, in so far as the considerations relating to the consequences of incorrect use of a product are relevant for the
purposes of assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, it must be
pointed out that those considerations were taken into account by OHIM in the way it determined the characteristics of the
consumers concerned. As OHIM rightly stated in the contested decision, the relevant public in the present case is made up
of the average consumers of two types of product. As regards pharmaceutical products, it is apparent that the Board of Appeal
shares the reasoning of the Opposition Division that consumers are assisted in their choice by highly qualified professionals.
In relation to herbal medicinal products, consumers are deemed to be reasonably well informed, observant and circumspect,
and used to using products whose name contains the prefix ‘echina-’. It may be assumed that consumers who are interested in
that type of product take particular care of their health so that they are less likely to confuse different versions of such
products. In other words, any risk of a mistaken choice and subsequent incorrect use of a product giving rise to certain harmful
consequences is compensated for by the high degree of awareness on the part of, and attention paid by, the average consumers
concerned.
The second part of the plea must therefore also be dismissed.

Third part, concerning the lack of descriptive character of the prefix ‘echina-’
Arguments of the parties
The applicant considers that the Board of Appeal erred in its assessment in considering that the prefix ‘echina-’ has descriptive
character, or at least that it is not distinctive.
It states that the word ‘Echinacea’ is not Latin but English, although the relevant public is not English, and only a minority
of the English-speaking public would understand the word ‘Echinacea’ and make the connection with the prefix ‘echina’.
The number of marks registered in various countries containing the prefix ‘echin-’ or ‘echina-’, featuring on a list supplied
by Optima Healthcare Ltd, is not very high and is thus not sufficient to prove that the prefix is ‘commonly’ used or that
it would be understood by the relevant consumers.
Moreover, the part of the signs at issue which will be perceived by consumers as the most striking in phonetic terms, namely
‘echina-’, is identical in both cases. Thus, it is clear that consumers will not be able to distinguish between the two.
Finally, the applicant cites a decision of 18 June 2003 of the Fourth Board of Appeal (R 121/2002-4) in which it was concluded
that there was a likelihood of confusion between the marks SELENIUM-ACE and Selenium Spezial A-C-E. According to that decision,
the word ‘Selenium’, designating a chemical element, was not only part of the former mark but would be perceived by the average
consumer as its most significant element and therefore had to be regarded as sufficiently distinctive. It followed that there
was a likelihood of confusion.
OHIM explains that ‘Echinacea’ is not an English word but is ‘modern’ Latin, which is not connected with any country or territory
in particular. It is customary to use Latin in both the pharmaceutical industry and everyday medicine.
OHIM considers that the list, supplied by Optima Healthcare Ltd, of more than 30 marks containing the prefix ‘echin-’ or ‘echina-’
registered in one or more of the territories relevant to the present case proves the descriptive character of the word ‘Echinacea’
and thus, of the prefix ‘echin-’ in the mind of the public in those territories. OHIM also submits that the applicant did
not challenge those arguments during the proceedings before the Opposition Division.
That descriptive character is, furthermore, confirmed by a search carried out on the internet on the word ‘Echinacea’ for
each of the languages concerned. That search generated 1 940 results for Spanish web pages, 2 630 results for French web pages,
6 080 results for Italian web pages, 1 160 results for Portuguese web pages, 36 600 results for German web pages, and 7 360
results for Dutch web pages.
Given its descriptive character, the prefix ‘echina-’ has little, if any, capacity to distinguish goods as coming from a particular
undertaking. Thus, the average consumer who is reasonably well informed and observant cannot rely on that prefix to differentiate
between the competing marks. That consumer will not be led to assume that ECHINACIN and ECHINAID come from the same undertaking
on the basis of the common prefix ‘echina-’. That prefix is a clear and straightforward reference to the composition and characteristics
of the products in dispute and not an indication of their respective manufacturers.
Findings of the Court
The Court finds that OHIM correctly concluded that the prefix ‘echina-’ was descriptive and that, consequently, the public
in the relevant territories, when confronted with the mark applied for for goods in Class 5, would regard it as referring
to goods derived from the plant ‘Echinacea’.
That conclusion concerning the descriptive character of the mark applied for is justified by the factors analysed by the Board
of Appeal in particular in paragraphs 18 to 21 of the contested decision. The word ‘Echinacea’ is the scientific name in Latin
of a plant used for pharmaceutical products and herbal medicine. It is common to use the Latin names of plants in those areas.
That is confirmed by the large number of registrations of the prefix ‘echin-’ or ‘echina-’ in the territories concerned. OHIM
was therefore justified in finding that the prefix ‘echina-’ refers, as far as the average consumer is concerned, to the composition
of the product rather than to its commercial origin.
Consequently, the third part of the plea cannot be upheld.

Fourth part, concerning the incorrect assessment of the likelihood of confusion
Arguments of the parties
The applicant complains, first, that the Board of Appeal, which classed the endings of the marks in issue, that is to say
‘-id’ and ‘-cin’, as dominant elements, did not make a comparison of the signs as they will be perceived by consumers, namely
as a whole. It points out that, according to the Court of Justice, the average customer perceives the trade mark as a whole
and does not proceed to analyse its various details (Case C-251/95
SABEL
[1997] ECR I-6191, paragraph 23).
Second, the applicant complains that the Board of Appeal misapplied the concept of ‘the average consumer’ in taking only professionals
and not the end consumer into account. That error is said to be apparent from paragraph 23 of the contested decision, in which
the Board of Appeal observes that consumers of that type of goods are used to marks containing the prefix ‘echina-’. However,
that type of goods is not very common in trade. Moreover, it is conceivable that such a public, which only rarely has the
chance to make a direct comparison between the different marks, but has to place its trust in the imperfect image of them
that it has retained in its mind, may regard the products under the conflicting marks as belonging, admittedly, to two distinct
ranges of products but as coming, none the less, from the same manufacturer (Case T-104/01
Claudia Oberhauser
v
OHIM
–
Petit Liberto
(Fifties)
[2002] ECR II-4359, paragraph 49).
In concluding its application, the applicant refers to a decision of 25 April 2001 of the Third Board of Appeal (R 816/1999-3).
In that decision the Board of Appeal considered that there was a likelihood of confusion for the average consumer between
two marks designating pharmaceutical products, namely A-MULSIN and ALMOXIN, which have more or less the same composition and
are used for the same purposes. In that case the Board stated in particular that as regards medicines for mild disorders,
such as painkillers, sleeping pills or healing ointments, the degree of attention of the average consumer will be very low.
The average consumer will generally buy that type of product without reading the leaflet and without necessarily asking the
pharmacist for advice, but it is at the time of purchase that confusion may arise. The Board of Appeal concluded that although
an attentive consumer was capable of distinguishing between the marks at issue visually, particularly by reason of the existence
of a hyphen, the average consumer would not, by contrast, be able to memorise the slight phonetic differences between the
two marks.
On the first point OHIM considers, on the contrary, that although the sign must be considered in its totality it is also crucial
to consider the various elements of each sign when carrying out a global assessment (Case T-224/01
Durferrit
v
OHIM
–
Kolene
(NU-TRIDE)
[2003] ECR II-1589). According to the Court’s case-law, the distinctiveness of the mark is one of the factors that must be
taken into account in assessing likelihood of confusion (
SABEL
, paragraph 24; Case C-39/97
Canon
[1998] ECR I-5507, paragraph 18; and Case C-342/97
Lloyd Schuhfabrik Meyer
[1999] ECR I-3819, paragraph 25). In determining the distinctive character of a mark account should be taken of the inherent
characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services
for which it has been registered (Joined Cases C-108/97 and    C-109/97
Windsurfing Chiemsee
[1999] ECR I-2779, paragraphs 49 and 51, and
Lloyd Schuhfabrik Meyer
, paragraphs 22 and 23). The visual, aural or conceptual similarity of the marks must be based on the overall impression created
by them, bearing in mind in particular their distinctive and dominant components (
SABEL
, paragraph 23, and
Lloyd Schuhfabrik Meyer
, paragraphs 22 and 23).
It follows that where a mark is composed of a descriptive element, that element cannot be regarded as the dominant element
because otherwise a finding of likelihood of confusion could be based only on elements that cannot be protected as trade marks.
OHIM therefore considers that the Board of Appeal was right to conclude that the presence of the prefix ‘echina-’ in the two
marks was insufficient to justify a finding of likelihood of confusion.
As regards the second point, OHIM points out that the Board of Appeal took the perspective of the average consumer of vitamins,
food supplements, herbal preparations and pharmaceutical and medical preparations into account rather than that of a professionally
skilled public, namely doctors or pharmacists. If those products may be bought without prescription that is because health
authorities deem the average consumer to be sufficiently informed about them to be able to make their own choices. In addition,
the average consumer of those products, who is typically a consumer of, and interested in, health products based on natural
substances, is likely to possess the minimum knowledge of those products required to be aware of the particular properties
of products containing Echinacea.
OHIM considers that the average consumer of the products in question is aware of those properties and will perceive the prefix
as referring to the kind of product rather than to its commercial origin. While the average consumer’s level of attention
varies according to the nature of the goods concerned (
Lloyd Schuhfabrik Meyer
, paragraph 26), there is no reason, as far as health products are concerned, to believe that the average consumer is inattentive
when making his selection of goods, and still less reason if, as the applicant claims, serious health risks could ensue if
the products in dispute were confused.
Findings of the Court
The Court points out that the public will not generally consider a descriptive element forming part of a complex mark to be
the distinctive and dominant element of the overall impression conveyed by that mark (
BUDMEN
, paragraph 53).
In the present case, as the Court has already noted in paragraph 44 above, since the prefix common to the two signs concerned,
namely ‘echina-’, is descriptive in character, it does not enable the commercial origin of the products to be distinguished.
Therefore OHIM rightly found that the respective endings of the signs at issue, namely ‘-id’ and ‘-cin’, were to be regarded
as the distinctive and dominant elements which attract the attention of consumers.
As regards the alleged misapplication of the concept of ‘the average consumer’, which the applicant infers from paragraph
25 of the contested decision, it is sufficient to note that the paragraph in question does not refer to professionals but
to ‘the public concerned’. That expression is defined in paragraph 23, in which the Board of Appeal refers expressly to the
average consumer of the products in question, who is deemed to be reasonably well informed, observant and circumspect. Contrary
to the applicant’s submission, OHIM did not, therefore restrict its examination of the likelihood of confusion to professional
consumers but clearly took account of the perception of the end consumers of the goods at issue.
Although it is correct, as submitted by the applicant, that the average consumer only rarely has the chance to make a direct
comparison between the different marks but has to place his trust in the imperfect image of them that he has retained in his
mind, given the descriptive character of the prefix ‘echina-’ that argument cannot be upheld in the present case.
Finally, in relation to the applicant’s citing of a decision of the Third Board of Appeal, reference is made to paragraph
24 of this judgment.
It follows that the fourth part of the plea must be dismissed.

Fifth part, concerning failure to take account of the ‘rule of interdependence’
Arguments of the parties
The applicant complains that the Board of Appeal did not apply the ‘rule of interdependence’. According to that ‘rule’, a
global assessment of the likelihood of confusion implies some interdependence between the relevant factors. In particular,
a lesser degree of similarity between the products or services in question may be offset by a greater degree of similarity
between the marks, and vice versa (
Canon
, paragraphs 15 to 18).
The applicant considers that, in the present case, the high degree of similarity between the products should have been considered
by the Board of Appeal as sufficient to offset the slight differences existing between the signs.
OHIM acknowledges that the global assessment of likelihood of confusion includes the extent of interdependence between the
factors taken into account, and that in the present case, the goods covered by the marks at issue are identical. However,
the fact that the goods are identical should be weighed against the degree of distinctiveness of the marks. Since the marks
at issue are composed of a descriptive prefix, the distinctiveness of the marks is limited to their endings, the part on which
consumers will tend to focus their attention. Consequently, the scope of protection of the earlier mark is considerably limited.
Findings of the Court
It is settled case-law that the global assessment of the likelihood of confusion implies some interdependence between the
relevant factors, and in particular similarity between the trade marks and between these goods or services covered. Accordingly,
a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the
marks, and vice versa (
Canon
, paragraph 17, and Case T-3/04
Simonds Farsons Cisk
v
OHIM
–
Spa Monopole
(KINJI by SPA)
[2005] ECR II-0000, paragraph 33).
The applicant submits that the assessment carried out by OHIM of the likelihood of confusion in this case is vitiated by error,
since the contested decision does not mention what the applicant terms the ‘rule of interdependence’, established by the case-law
(
Canon
, paragraph 17).
It must be observed that, in so far as that argument should be understood as meaning that the case-law concerned defines the
‘rule of interdependence’ as constituting an autonomous rule of law, it is not well founded. The considerations relating to
that ‘rule’ constitute merely the expression of one of many factors which need to be taken into account when a global assessment
of the likelihood of confusion is carried out in a particular case. It follows that the mere absence of a reference to that
factor in the contested decision cannot lead to a presumption that the assessment of the likelihood of confusion set out therein
is vitiated by an error.
In the light of all the factors taken into account for the purposes of assessing the likelihood of confusion, as set out in
the contested decision, and, in particular, the evidence referred to therein of the coexistence in the relevant territories
of several marks composed of the prefixes ‘echin-’ or ‘echina-’ with various endings, the applicant’s arguments are not such
as to indicate any error in the Board of Appeal’s reasoning.
It follows that the fifth part of the plea necessarily has to be dismissed. Consequently, the action must be dismissed in
its entirety.

Costs
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 incurred by OHIM, as applied for by the latter.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1.
Dismisses the action;
2.
Orders the applicant to pay the costs.
Cooke
Labucka
Trstenjak
Delivered in open court in Luxembourg on 5 April 2006.
Registrar

President
E. Coulon

J.D. Cooke
*
Language of the case: English.