Opinion of the Advocate General — ECLI:EU:C:2006:687
Date: 2006-10-26
Language of the case: English
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible

Summary of the Judgment 1. Procedure – Introduction of pleas in the course of proceedings (Rules of Procedure of the Court of First Instance, Art. 48(2)) 2. Community trade mark – Appeals procedure (Rules of Procedure of the Court of First Instance, Art. 135(4); Council Regulation No 40/94, Art. 63) 3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an earlier mark which is similar or identical to that registered for identical products or services (Council Regulation No 40/94, Art. 8(1)(b)) 4. Community trade mark – Decisions of the Office – Legality (Council Regulation No 40/94) 5. Appeals – Grounds – Contradictory grounds – Admissibility 1. Although the first subparagraph of Article 48(2) of the Rules of Procedure of the Court of First Instance prohibits the introduction of new pleas in law 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, a plea which constitutes the amplification of a plea put forward earlier must however be held to be admissible. (see paras 38-40) 2. In proceedings concerning an appeal against a decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), which has ruled on an action against a decision of the Opposition Division, the party which sought registration of the mark does not have the power to alter before the Court of First Instance the terms of the dispute, as delimited in the respective claims and allegations it and the party opposing the trade mark application have submitted. First, under Article 63 of Regulation No 40/94 on the Community trade mark, a Board of Appeal’s decision may be annulled or altered only on grounds of lack of competence, infringement of an essential procedural requirement, failure to comply with the EC Treaty, with Regulation No 40/94 or with any rule of law relating to their application, or misuse of power. Accordingly, the review of that decision by the Community Courts is confined to a review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within the Office, requiring new factual submissions made to that body to be taken into consideration. Secondly, it follows from Article 135(4) of the Rules of Procedure of the Court of First Instance that the parties to proceedings before that Court may not change the subject-matter of the proceedings before the Board of Appeal. (see paras 43-45) 3. In assessing whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark concerning medicinal products requiring a doctor’s prescription prior to their sale to end-users in pharmacies, the Court of First Instance may find, without erring in law, that the relevant public is composed not only of end-users, but also of professionals, that is, doctors who prescribe the medicinal product and pharmacists who sell it. The fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue. In addition, since it is undisputed that the whole process of marketing the pharmaceutical products at issue is aimed at the end-user’s acquisition of them, the role played by intermediaries, must be in part balanced against the high degree of attentiveness which may be shown by those users when the pharmaceutical products are prescribed and, consequently, against those users’ ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences. (see paras 52, 57-59, 61, 63) 4. The decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of the Office for Harmonisation in the Internal market (Trade Marks and Designs) are led to take under Regulation No 40/94 on the Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the Community judicature and not on the basis of a previous decision-making practice. (see para. 65) 5. The issue whether the grounds of a judgment of the Court of First Instance are contradictory or inadequate is a question of law which is amenable, as such, to judicial review on appeal. (see para. 97)