ORDER OF THE COURT (Eighth Chamber)

24 September 2009 (*)

(Appeals – Community trade mark – Word mark BioVisc – Opposition filed by the proprietor of Community and international word marks PROVISC and DUOVISC – Rejection of the opposition by the Board of Appeal of OHIM)

In Case C‐481/08 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged on 7 November 2008,

**Alcon Inc.,** established in Hünenberg (Switzerland), represented by M. Graf, Rechtsanwalt,

applicant,

the other parties to the proceedings being:

**Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),** represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

***Acri.Tec AG Gesellschaft für ophthalmologische Produkte,** established in Hennigsdorf (Germany), represented by H. Förster, Rechtsanwalt,

intervener at first instance,

THE COURT (Eighth Chamber),

composed of T. von Danwitz, President of the Chamber, E. Juhász and G. Arestis (Rapporteur), Judges,

Advocate General: J. Kokott,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

**Order**

1        By its appeal, Alcon Inc. seeks annulment of the judgment of the Court of First Instance of the European Communities of 10
September 2008 in Case T‐106/07 *Alcon* v *OHIM* – **Acri.Tec* (*BioVisc*) (‘the contested judgment’), whereby that Court dismissed Alcon’s action for annulment of the decision of the Second Board
of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 February 2007 (Case
R 660/2006‐2; ‘the contested decision’), concerning the opposition, filed by the applicant, to registration of the word mark
BioVisc sought by *Acri.Tec AG Gesellschaft für ophthalmologische Produkte (‘*Acri.Tec’).

**Legal context**

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council
Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1), which
entered into force on 13 April 2009. Nevertheless, having regard to the date of the material facts, the present dispute is
governed by Regulation No 40/94.

3        Article 8(1)(b) of Regulation No 40/94 provided:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b)      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.’

**Background to the dispute**

4        The background to the dispute was set out by the Court of First Instance in paragraphs 1 to 9 of the contested judgment as
follows:

‘1      On 6 February 2004, [*Acri.Tec] filed an application for registration of a Community trade mark with [OHIM] under ... Regulation
... No 40/94 ...

2      Registration was sought for the word mark BioVisc.

3      The goods for which registration was sought fall 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: “Ophthalmic preparations and sterile solutions for intraoperative eye operations”. On 4 October
2006 the list of goods was restricted as follows: “Sterile solutions for intra-operative eye operations”.

4      The application was published in the *Community Trade Marks Bulletin* No 49/2004 of 6 December 2004.

5      On 7 March 2005 ... Alcon Inc. filed a notice of opposition against registration of the mark applied for. The opposition was
based inter alia on the following earlier registrations:

–        international registration No 553751 for the word mark PROVISC, dated 24 April 1990, with effect in Germany, Spain, France,
Italy, Austria, Portugal and the Benelux countries, in respect of “products for use in ophthalmology” in class 5;

–        international registration No 659615 for the word mark DUOVISC, dated 2 September 1996, with effect in Germany, Spain, France,
Italy, Austria, Portugal and the Benelux countries, for “ophthalmic pharmaceutical preparations” in class 5.

6      The opposition, based on the relative grounds for refusal in Article 8(1)(a) and (b) of Regulation No 40/94, referred to all
the goods covered by the earlier registrations and was directed against all the goods covered by the mark applied for.

7      By decision of 30 March 2006 the Opposition Division upheld the opposition in its entirety, holding that, having regard in
particular to the visual and phonetic similarities of the marks at issue and the fact that the goods concerned were identical,
there was a likelihood of confusion.

8      On 17 May 2006 the intervener filed an appeal with OHIM against the Opposition Division’s decision.

9      By ... the contested decision, the Second Board of Appeal of OHIM annulled the Opposition Division’s decision and granted the
application for registration. Essentially, the Board of Appeal held that the existence of visual, phonetic and conceptual
differences between the signs at issue was sufficient to exclude any likelihood of confusion on the part of the relevant public.’

**The proceedings before the Court of First Instance and the contested judgment**

5        By application lodged at the Registry of the Court of First Instance on 11 April 2007, the applicant brought an action seeking
annulment of the contested decision.

6        In support of that action, it raised a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 40/94.

7        By the contested judgment, the Court of First Instance dismissed that action.

8        In particular, with regard to the definition of the relevant public, the Court of First Instance ruled, in paragraphs 25 and
26 of the contested judgment, as follows:

‘25      As a preliminary point, it must be observed that the applicant’s argument alleging that the Board of Appeal’s definition of
the relevant public is incorrect was put forward for the first time before the Court at the hearing. Furthermore, that is
not disputed by the applicant. It follows that that argument, which is out of time, cannot be taken into consideration by
the Court.

26      As regards the relevant public, the earlier international marks are protected in Germany, Spain, France, Italy, Austria, Portugal
and the Benelux countries. Therefore, as the Board of Appeal rightly stated in paragraph 36 of the contested decision, the
relevant public is composed of consumers from those Member States. The goods concerned are not mass consumption items, but
are very specific products used for medical purposes. Sterile solutions for intraoperative eye operations will be purchased,
as the Board of Appeal held, by professionals who can be expected to take more care when purchasing and notice differences
which might not be perceived by a normally circumspect consumer.’

9        In addition, with regard to the comparison of the signs at issue from a phonetic point of view, the Court of First Instance
ruled, in paragraphs 35 to 37 of the contested judgment, as follows:

‘35      From the phonetic point of view, it is necessary to determine whether the differences between the signs at issue are sufficient
to distinguish them.

36      First, the prefixes cannot create for the average consumer an overall impression of phonetic similarity. The difference between
the signs at issue is sufficiently significant to change their perception from a phonetic point of view. Those prefixes are
pronounced differently and have different intonations.

37      Second, the Court holds that, as the Board of Appeal rightly stated in paragraph 39 of the contested decision, in the overall
assessment of the aural impression of the signs at issue the identical suffixes will not cause the other letters of the respective
marks to recede and remain unimportant or heard less clearly.’

**Forms of order sought by the parties before the Court of Justice**

10      The applicant claims that the Court should set aside the contested judgment and the contested decision and order OHIM to pay
the costs.

11      OHIM and *Acri.Tec contend that the Court should dismiss the appeal and order the applicant to pay the costs.

**The appeal**

12      By virtue of Article 119 of the Rules of Procedure, where the appeal is, in whole or in part, clearly inadmissible or clearly
unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General,
by reasoned order dismiss the appeal.

13      In support of its appeal, the applicant raises two pleas in law alleging, first, a distortion of the facts and evidence and,
second, breach of Article 8(1)(b) of Regulation No 40/94.

*The first plea*

14      By its first plea, which has two limbs, the applicant complains that the Court of First Instance distorted the facts and evidence
by holding, in paragraph 26 of the contested judgment, that the goods concerned are not for mass consumption and that sterile
solutions for intraoperative eye operations will be purchased by professionals. The Court of First Instance should have taken
into account the fact that the formulation ‘sterile solutions’ in the application for registration of the disputed mark as
a Community trade mark covers a broad range of potential uses for that trade mark, inter alia, for sterile solutions to clean
contact lenses, which products may be bought and used by consumers who are not necessarily health professionals.

15      Secondly, the applicant complains that, in paragraph 25 of the contested judgment, the Court of First Instance disregarded
as out of time, that is to say, put forward for the first time at the hearing before it, the argument that it advanced with
regard to the incorrect definition of the relevant public adopted by the Board of Appeal of OHIM, in that the Board of Appeal
failed to take into consideration the fact that certain goods covered by the disputed mark, such as eye-drops or contact lens
cleaning solutions, are intended for the average consumer. The applicant submits that the definition of the relevant public
constitutes a question of law and must be determined by the Court of First Instance as such even if a complaint in that respect
was raised for the first time only at the hearing.

16      With regard to the second limb, first of all it must be borne in mind that the definition of the relevant public is an appraisal
of fact (see, to that effect, Case C‐144/06 P *Henkel* v *OHIM* [2007] ECR I‐8109, paragraph 51, and the order of 15 February 2008 in Case C‐243/07 P *Brinkmann* v *OHIM*, paragraph 35).

17      Next, it is apparent from the first subparagraph of Article 48(2) of the Rules of Procedure of the Court of First Instance
that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which
come to light in the course of the procedure. Since it was only at the stage of the hearing that the applicant raised for
the first time before the Court of First Instance a complaint alleging an incorrect definition of the relevant public by the
Board of Appeal of OHIM and since that complaint was not based on matters which came to light during the proceedings before
that Court, clearly the Court of First Instance was right in holding, in paragraph 25 of the contested judgment, that that
complaint must be disregarded as out of time.

18      With regard to the first limb, alleging distortion of the facts and evidence by the Court of First Instance in paragraph 26
of the contested judgment, it must be borne in mind that, in accordance with Article 225(1) EC and the first paragraph of
Article 58 of the Statute of the Court of Justice, an appeal is to be limited to points of law. The Court of First Instance
has exclusive jurisdiction to find the facts and to appraise the evidence. The appraisal of the facts and evidence thus does
not, save where they have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice
on appeal (see, inter alia, Case C‐104/00 P *DKV* v *OHIM* [2002] ECR I‐7561, paragraph 22, and Case C‐16/06 P *Les Éditions Albert René* v *OHIM* [2008] ECR I‐0000, paragraph 68).

19      Furthermore, there is such distortion where, without recourse to new evidence, the assessment of the existing evidence appears
to be clearly incorrect (Case C‐229/05 P *PKK and KNK* v *Council* [2007] ECR I‐439, paragraph 37, and Case C‐304/06 P *Eurohypo* v *OHIM* [2008] ECR I‐3297, paragraph 34).

20      In the present case, without even supporting its allegation of distortion of the facts and evidence with the least specific
argument allowing such distortion to be identified, the applicant merely complains that the Court of First Instance did not
take account of the fact that the expression ‘sterile solutions’ in the application for registration of the disputed mark
as a Community trade mark also covers goods which may be bought by consumers who are not health professionals.

21      In that regard, it must be noted that the applicant has read that application wrongly in that it widens the range of goods
mentioned in it to all ‘sterile solutions’, whereas it is apparent from the findings in paragraph 3 of the contested judgment
which are not criticised that that application covers a narrower range of goods, namely, ‘sterile solutions for intraoperative
eye operations’. The applicant thus fails to establish that the appraisal with regard to the definition of the relevant public
adopted by the Court of First Instance in paragraph 26 of the contested judgment is manifestly incorrect.

22      It must rather be held that, by its first plea, under cover of a complaint of distortion, the applicant is in fact seeking
to call into question the factual appraisal made by the Court of First Instance in paragraph 26 of the contested judgment
with regard to the relevant public and have the Court of Justice substitute its own appraisal.

23      As is apparent from paragraph 18 of this order, such an appraisal cannot be subject to the review of the Court of Justice
in the context of an appeal.

24      Consequently, since the applicant has, moreover, failed to show that the Court of First Instance distorted the facts and the
evidence in that regard, the first plea must be rejected as manifestly inadmissible.

*The second plea*

25      By its second plea, the applicant complains that the Court of First Instance breached Article 8(1)(b) of Regulation No 40/94
by holding, in paragraphs 35 to 37 of the contested judgment, that the signs at issue were not phonetically similar, on the
ground that it did not take account of the phonetic impression of those signs on the relevant public in all the territories
in which the earlier marks are protected, in particular in France. It submits that, since the contested decision was drafted
in English, the pronunciation of the signs at issue in that language alone was taken into consideration, thus excluding their
pronunciation in French.

26      In that regard, it appears clear that, by its second plea, the applicant is in fact trying to call into question the appraisal
of the phonetic similarity of the signs at issue made by the Court of First Instance in paragraphs 35 to 37 of the contested
judgment. Such an appraisal, since it is factual in nature, cannot, in principle, be subject to the review of the Court of
Justice in the context of an appeal, as is clear from paragraph 18 of the present order.

27      In addition, it must be noted that there is no element of the contested judgment which suggests that the Court of First Instance
limited its appraisal of the phonetic impression of the signs at issue to English-speaking territories alone, as the applicant
asserts. Although the Court of First Instance does not expressly state that it took account of the pronunciation of those
signs in all the languages of the Member States in which the earlier marks are protected, it is apparent from paragraphs 26
and 35 to 37 of the contested judgment that the Court of First Instance made an appraisal of the phonetic impression created
by the signs at issue on average consumers of those Member States, including the French Republic, by taking into consideration
the specific linguistic features thereof and, accordingly, by examining the pronunciation of the signs at issue in the various
languages concerned.

28      As a consequence, since no distortion of the facts or evidence has been demonstrated with regard to the statements made in
paragraphs 35 to 37 of the contested judgment, the second plea must also be rejected as manifestly inadmissible.

29      It follows from the foregoing considerations that the appeal must be dismissed in its entirety as manifestly inadmissible.

**Costs**

30      Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, 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, having regard to the form of order sought by OHIM and *Acri.Tec, be ordered to pay the costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1.      **The appeal is dismissed.**

2.      **Alcon Inc. is ordered to pay the costs.**

[Signatures]

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- Language of the case: English.