Judgment — ECLI:EU:T:2014:508
Date: 2014-06-11
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Greece

summary of the pleas in law on which the application is based. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which, under those provisions, must appear in the application itself (Case T‑183/03 Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) [2004] ECR II‑3113, paragraph 11; judgment of 4 March 2010 in Case T‑477/08 Mundipharma v OHIM — ALK-Abelló (AVANZALENE), not published in the ECR, paragraph 16; and judgment of 22 June 2011 in Case T‑76/09 Mundipharma v OHIM — Asociación Farmaceuticos Mundi (FARMA MUNDI FARMACEUTICOS MUNDI), not published in the ECR, paragraph 17). 15 It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (representation of a pelican), not published in the ECR, paragraph 19). Consequently, to the extent that the application refers generally to the documents and written submissions which the applicant lodged with OHIM, it is inadmissible, in so far as the general reference to the observations submitted in the course of the proceedings before OHIM which it contains cannot be connected to pleas and arguments in that application. The application will therefore be examined in the light solely of the arguments which it sets out. Substance 16 The applicant relies, in essence, on two please in law alleging, first, that the Board of Appeal did not take into consideration certain objections put forward before it and, secondly, infringement of Article 8(1)(b) of Regulation No 207/2009. The first plea, alleging that certain objections put forward in the course of the proceedings before the Board of Appeal were not taken into consideration 17 The applicant challenges, in essence, the contested decision on the ground that the Board of Appeal did not take into consideration three objections put forward in the course of the proceedings before it, namely the categorisation of the opposition brought by the other party to the proceedings before OHIM as an abuse of rights, that party’s non-use of its right to submit an application for registration of a Community trade mark and the vagueness of that party’s written pleadings. The applicant also alleges that the Board of Appeal did not take into account certain items of evidence which she had put forward in support of her arguments. 18 It should be noted that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. According to the case-law, that duty has the same scope as that laid down in the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, secondly, to enable the Courts of the European Union to review the legality of the decision (Case T‑16/02 Audi v OHIM (TDI) [2003] ECR II‑5167, paragraphs 87 and 88; Joined Cases T‑124/02 and T‑156/02 Sunrider v OHIM — Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II‑1149, paragraphs 72 and 73; and Case T‑304/06 Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 43). 19 However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see Mozart, paragraph 18 above, paragraph 55 and the case-law cited). 20 In the present case, the Court points out that, by finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue as regards ‘pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’, the Board of Appeal implicitly rejected the objections and items of evidence to which the applicant refers. 21 Consequently, the Board of Appeal’s comparison of the signs at issue and of the goods in question and its global assessment of the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 necessarily implies a rejection of the applicant’s claim relating to the alleged vagueness of the opposing party’s written pleadings and to the items of evidence which she put forward in support of her arguments alleging that there is no likelihood of confusion between the marks at issue. 22 Furthermore, that implicit reasoning for the contested decision appears sufficient in the light of the manifestly unfounded criticisms which the applicant has put forward in that respect. 23 In that regard, it must be borne in mind that it is apparent from a combined reading of Article 8(1) and (2)(a)(ii) of Regulation No 207/2009 that the proprietor of an earlier national mark is entitled to oppose the registration of a Community trade mark. The applicant could not therefore reasonably complain that the proprietor of the earlier national mark used the right which it derives from those provisions or put forward against it the fact that it did not submit an application for registration of a Community trade mark. 24 The first plea must therefore be rejected. The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 25 The applicant complains, in essence, that the Board of Appeal found that there was a likelihood of confusion between the marks at issue, although the conditions of Article 8(1)(b) of Regulation No 207/2009 are not satisfied. 26 A preliminary point to note is that, as a result of the partial annulment of the Opposition Division’s decision by the Board of Appeal, the only finding which continues to adversely affect the applicant is the Board of Appeal’s finding that the registration of the mark applied for in respect of ‘pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’ is capable of giving rise to a likelihood of confusion with the earlier mark on the part of the relevant public. 27 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark. 28 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 from economically‑linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited). – The relevant public 29 According to settled 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). 30 Having regard to the goods at issue, the Court holds that the Board of Appeal was right to find, for the reasons set out in paragraphs 24 to 35 of the contested decision, that the relevant public consisted of both Portuguese professionals and average Portuguese consumers displaying a heightened degree of attention. Such an assessment does not, moreover, appear to be disputed by the applicant. – The comparison of the goods at issue 31 According to settled case-law, in order to assess the similarity between the goods or services concerned, all the relevant factors of the relationship between them should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited). 32 The applicant submits, in essence, that the goods which she markets under the mark applied for are dietary supplements which have no connection with the pharmaceutical products protected by the earlier national mark. She adds that she was obliged to refer to goods in Class 5 of the Nice Agreement since there is no more specific class for dietary supplements. 33 In the first place, the Court points out that the Community trade mark application was not made in respect of dietary supplements, but in respect of the goods referred to in paragraph 3 above. 34 In that context, it should be borne in mind that, under Article 26(1)(c) of Regulation No 207/2009, an application for a Community trade mark is to contain a list of the goods or services in respect of which the registration is requested. According to Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the list of goods and services is to be worded in such a way as to indicate clearly the nature of the goods and services. Lastly, Article 43(1) of Regulation No 207/2009 provides that the applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein. 35 It is clear from those provisions that it is for the person requesting registration of a sign as a Community trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating their nature. OHIM, for its part, must examine the application in relation to all the goods or services on the list concerned, taking into account, if necessary, restrictions to that list within the meaning of Article 43(1) of Regulation No 207/2009. If the list of goods or services covered by a Community trade mark application includes one or more categories of goods or services, OHIM is not under any obligation to make an assessment of each of the goods or services coming within each category, but must direct its examination to the category in question, as such (Mozart, paragraph 18 above, paragraph 23). 36 It must also be stated that the applicant’s claim that she was obliged to refer to goods in Class 5 is irrelevant, since, according to Rule 2(4) of Regulation No 2868/95, as amended, the classification of goods is to serve exclusively administrative purposes and therefore no direct conclusion concerning the similarity between the goods at issue can be deduced from that classification (see judgment of 2 February 2012 in Case T‑387/10 Goutier v OHIM — Euro Data (ARANTAX), not published in the ECR, paragraph 52 and the case-law cited). In any event, it remained open to the applicant, if that was her intention, to state with precision that her trade mark application was made in respect of dietary supplements. 37 As the applicant did not make use of the possibility provided for in Article 43(1) of Regulation No 207/2009, the Board of Appeal was right to compare, on the one hand, the ‘pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’ covered by the mark applied for with, on the other, the ‘pharmaceutical products, pharmaceutical preparations, medicines for humans and animals, sanitary products and disinfectants’ covered by the earlier mark. 38 In the second place, as the Board of Appeal pointed out in paragraph 41 of the contested decision, the ‘pharmaceutical and veterinary preparations’ covered by the mark applied for may be regarded as identical to the ‘medicines for humans and animals’ covered by the earlier mark. Likewise, the Board of Appeal was right to find that ‘disinfectants’ and ‘sanitary preparations for medical purposes’ are identical to ‘sanitary products and disinfectants’. 39 In the third place, the Board of Appeal was also right to find, in paragraphs 42 and 43 of the contested decision, that the ‘plasters, materials for dressings; material for stopping teeth, dental wax’ covered by the trade mark application are similar to the ‘pharmaceutical preparations’ covered by the earlier mark. It must be pointed out that those two categories of goods are aimed at the same public (healthcare professionals and end consumers) and have the same intended purpose, being intended, inter alia, for use in medical treatment or in a surgical operation. They are also the same in nature, given that they are perceived by consumers as goods belonging to the same general category of healthcare products. 40 In the fourth place, and for the same reasons as those set out in paragraph 39 above, the same conclusion must be drawn as regards the comparison of the ‘dietetic substances adapted for medical use’ covered by the mark applied for with the ‘pharmaceutical preparations’ covered by the earlier mark. In that regard, it is clear that the applicant’s argument alleging that dietetic substances cannot fall within the category of pharmaceutical preparations fails to take into consideration the fact that the trade mark application refers expressly to dietetic substances adapted for medical use. There is therefore a relationship of similarity with the pharmaceutical preparations covered by the earlier mark. 41 In view of the foregoing, it must be held that the Board of Appeal was right to find that the ‘pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’ are identical or similar to some of the goods covered by the earlier mark. – The comparison of the signs at issue 42 According to settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited). 43 In the present case, the marks at issue are, on the one hand, the earlier word mark METABOL-MG and, on the other hand, the word mark applied for, METABOL. 44 In paragraphs 55 to 62 of the contested decision, the Board of Appeal found that the signs at issue were highly similar on account of the common element ‘metabol’, notwithstanding the element ‘mg’ at the end solely of the earlier mark. 45 The applicant submits that the signs at issue are not similar. She also refers to the fact that other Community trade marks including the word element ‘metabol’ have been registered without being subject to an opposition. 46 As regards, in the first place, the visual and phonetic comparison of the signs, the Board of Appeal was right to find that the presence of the word element ‘metabol’ in the marks at issue is a factor which makes them highly similar both visually and phonetically. Although the element ‘mg’ at the end of the earlier mark precludes the signs from being held to be visually and phonetically identical, the fact remains that that element plays only a minor part in the overall impression given by the earlier mark. 47 As regards, in the second place, the conceptual comparison of the signs, it must be pointed out that the relevant Portuguese public will perceive the word ‘metabol’, which those signs have in common, as a reference to the Portuguese word ‘metabolismo’, whereas the element ‘mg’ in the earlier mark has no meaning at all. The signs must therefore be held to be conceptually identical. 48 In view of the foregoing, it must be held that the Board of Appeal was right to find that the signs at issue are similar. 49 The argument alleging that the proprietor of the earlier mark did not oppose the registration of marks including the element ‘metabol’ must be rejected as irrelevant for reasons similar to those referred to in paragraph 23 above. The fact that the other party to the proceedings before OHIM has not in the past opposed the registration of marks including the word ‘metabol’ cannot preclude it from making use, in the present case, of the rights which it derives from Article 8(1) and (2)(a)(ii) of Regulation No 207/2009. – The likelihood of confusion 50 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. 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 (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74). 51 In the present case, inasmuch as, first, the goods covered by the marks at issue are identical or similar and, secondly, the signs at issue are highly similar visually and phonetically and conceptually identical, the Board of Appeal was right to find that there is a likelihood of confusion on the part of the relevant public. 52 Contrary to what the applicant appears to be putting forward, that conclusion is not in any way invalidated by the fact that the relevant public in respect of the earlier mark consists of Portuguese professionals and average Portuguese consumers. Under Article 1(2) of Regulation No 207/2009, a Community trade mark is to have a unitary character and to have equal effect throughout the European Union. It is therefore sufficient, in order for registration of a Community trade mark to be refused, that a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 18 September 2008 in Case C‑514/06 P Armacell v OHIM, not published in the ECR, paragraph 57, and VENADO with frame and others, paragraph 50 above, paragraph 76), in the present case Portugal. 53 The applicant’s argument to the effect that the use of the word element ‘metabol’ may not be reserved solely to the proprietor of the earlier mark on the ground that it is immediately understood as a reference to metabolism can also not be upheld. 54 First, although the use of the word ‘metabol’ in respect of some of the goods at issue may in fact be regarded as tending to confer on the earlier mark only a weak distinctive character with regard to those goods, the fact remains that the distinctive character of the earlier mark is only one factor among others involved in the assessment of the likelihood of confusion. Thus, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion (see, to that effect, Case T‑112/03 L’Oréal v OHIM — Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61; Case T‑134/06 Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70; and judgment of 14 February 2008 in Case T‑189/05 Usinor v OHIM — Corus (UK) (GALVALLOY), not published in the ECR, paragraph 70). In the present case, inasmuch as it has been pointed out that the goods in question and the signs at issue are identical or highly similar, it is clear that it must be held that there is a likelihood of confusion, even if the earlier mark has a weak distinctive character. 55 Secondly, it must be borne in mind that it follows from the coexistence of Community trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of OHIM, and that judicial review in respect of them does not fall within the jurisdiction of the General Court, that in proceedings opposing the registration of a Community trade mark, the validity of national trade marks may not be called into question. (Case C‑196/11 P Formula One Licensing v OHIM [2012] ECR, paragraph 40). Following the applicant’s argument could culminate in a finding that the earlier mark lacks distinctive character with regard to some of the goods at issue, a finding which would not be compatible with the coexistence of Community trade marks and national trade marks or with Article 8(1)(b) of Regulation No 207/2009, interpreted in conjunction with Article 8(2)(a)(ii) thereof. 56 The second plea must therefore be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the applicant’s second head of claim. Costs 57 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, she must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM. On those grounds, THE GENERAL COURT (Fourth Chamber) hereby: 1. Dismisses the action; 2. Orders Ms Sofia Golam to pay the costs. Prek Labucka Kreuschitz Delivered in open court in Luxembourg on 11 June 2014. [Signatures] * Language of the case: English.