JUDGMENT OF THE GENERAL COURT (First Chamber)
9 September 2011(*)
(Community trade mark – Opposition proceedings – Application for Community word mark OMNICARE CLINICAL RESEARCH – Earlier national figurative mark OMNICARE – Likelihood of confusion – Similarity of the signs – Similarity of the services – Genuine use of the earlier mark)
In Case T‑289/09,
Omnicare, Inc., established in Covington, Kentucky (United States), represented by M. Edenborough QC,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Astellas Pharma GmbH, established in Munich (Germany), represented by C. Gutiérrez Martínez, H. Granado Carpenter and M. Polo Carreño, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 14 May 2009 (Case R 401/2008-4), concerning opposition proceedings between Yamanouchi Pharma GmbH and Omnicare, Inc.,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, E. Cremona and S. Frimodt Nielsen (Rapporteur), Judges,
Registrar: S. Spyropoulos,
having regard to the application lodged at the Registry of the General Court on 24 July 2009,
having regard to the order of 24 November 2009 joining Cases T‑289/09 and T‑290/09 for the purposes of the written procedure,
having regard to the response of OHIM lodged at the Registry on 7 December 2009,
having regard to the response of the intervener lodged at the Registry on 12 January 2010,
having regard to the reply of the applicant lodged at the Registry on 20 April 2010,
having regard to the rejoinder of OHIM lodged at the Registry on 21 June 2010,
having regard to the rejoinder of the intervener lodged at the Registry on 14 June 2010,
further to the hearing on 10 May 2011,
gives the following
Judgment
Background to the dispute
1        On 19 June 2000, the applicant, Omnicare Inc., filed a Community trade mark application at 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark in respect of which registration was sought is the following word sign: OMNICARE CLINICAL RESEARCH.
3        The services in respect of which registration was sought are in Class 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals’.
4        On 16 July 2001, Yamanouchi Pharma GmbH – whose rights have been taken over by Astellas Pharma GmbH, intervener in the present proceedings – filed, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), a notice of opposition to registration of the mark applied for in respect of the services listed in paragraph 3 above.
5        The opposition was based on the following earlier German mark No 394 01 348:
6        The earlier mark designates services in Classes 35, 41 and 42 of the Nice Agreement which correspond to the following description: ‘Services of organisation, business management and medical consultancy for medical practice, in particular for urological practice; distribution of literature and printed matter for doctors for advertising use, in particular urologists; organisation of lectures, seminars, expositions and fairs for doctors, in particular urologists’.
7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8        The applicant required the intervener to provide proof, pursuant to Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), that it had put its mark to genuine use in Germany during the relevant period up to 17 April 2001, the date of publication of the Community trade mark application.
9        On 20 December 2007, the Opposition Division rejected the opposition in its entirety.
10      On 19 February 2008, the intervener filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
11      By decision of 14 May 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM allowed the appeal, annulled the Opposition Division’s decision and refused the Community trade mark application.
12      In particular, the Board of Appeal found that the earlier trade mark was registered in Germany and the relevant public was the specialist medical public in Germany, who would display a markedly higher degree of attentiveness and circumspection than the average consumer.
13      Confirming the findings of the Opposition Division, the Board of Appeal found that the evidence submitted by the intervener demonstrated that it had put its mark to genuine use in Germany during the period in question only in relation to the following services: ‘Medical consultancy for medical practice, namely for urological practice; distribution of literature and printed matter for doctors for advertising use, namely urologists; organisation of lectures, seminars, expositions and fairs for doctors, namely urologists’.
14      The Board of Appeal considered, however, that the services in question were similar. It pointed out, first, that even if the intervener’s services targeted urologists, they were also available for the wider public of medical professionals and, second, that even though, according to its specification, the applicant did not provide its services to urologists, it was not, in any event, urologists or surgeons who ordered clinical or laboratory research services, but rather pharmaceutical companies and governmental or international organisations as part of national or intergovernmental health programmes. The Board of Appeal noted that doctors and patients benefited from research but could not directly influence it. According to the Board, there is no point in conducting ‘clinical and laboratory research for others, excluding urologists’ if urologists cannot be regarded as a target group of those services anyway. Therefore, those services overlap and have enough in common to be regarded as similar. It stated that, by excluding urologists, the applicant was attempting, unsuccessfully, to avoid clashing with the intervener’s services, because even if clinical research were not offered directly in the area of urology – which is not at all obvious from the applicant’s limitation – that would not prevent specialists in that field from obtaining information about the pharmaceutical research carried out by the applicant through scientific journals or newsletters and so thinking that the two companies are connected because their services complement each other.
15      Moreover, the Board of Appeal upheld the analysis of the Opposition Division and considered that there was visual and phonetic similarity between the marks at issue and that the common element ‘omnicare’ was conceptually identical. It noted that the applicant did not challenge that analysis.
16      In light of the fact that, first, the signs at issue are similar visually and phonetically and all but identical conceptually and, second, the services in question are similar, at least to a low degree, the Board of Appeal held that consumers would inevitably connect the marks at issue and assume that the services marketed under them came from the same or economically linked undertakings.
17      It therefore concluded that there was a likelihood of confusion.
Forms of order sought by the parties
18      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
19      OHIM and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
20      The applicant relies on a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.
21      The applicant considers, in essence, that the Board of Appeal erred in finding, first, that the trade mark applied for and the earlier trade mark were similar, second, that the earlier mark had been put to genuine use and, third, that the services covered by the application for registration were similar to those for which genuine use of the earlier mark had been demonstrated. The applicant claims that as a result the Board of Appeal erred in finding that there was a likelihood of confusion between the conflicting marks and rejecting the application for registration in its entirety.
22      However, the applicant does not call into question the definition of the relevant public as the specialist medical public in Germany, who will display a markedly higher degree of attentiveness and circumspection than the average consumer.
Comparison of the signs at issue
Arguments of the parties
23      First, the applicant submits that, in a document dated 21 December 2005 which it annexed to its pleadings and which originates from the Deutsches Patent- und Markenamt (German Trade Mark and Patent Office), it is stated that the name of the earlier mark is MINICARE. It considers that the inclusion of the first letter ‘i’ is a typographical error. In the applicant’s view, the mark has been transcribed, after taking account of that error, as MNICARE. By contrast, the applicant considers that the omission of the letter ‘o’ cannot be considered an error. It submits that the person who examined that compound mark considered that the first letter of the word element was ‘m’, and that the logo which preceded that letter was not a letter or a stylised letter. Consequently, it considers, in essence, that the earlier mark has always been and will always be perceived as a compound mark, the first part being a logo representing a solid circle with a number of overlying half-shaded circles, followed by the word element ‘mnicare’. According to the applicant, since that was how the mark was perceived by the Deutsches Patent- und Markenamt, it is also how it will continue to be perceived by a member of the relevant public.
24      The applicant submits, in essence, that it must therefore be found that the marks at issue differ visually, phonetically and conceptually.
25      Second, the applicant submits that OHIM annexed to its response two documents dated 3 December 2009, according to which (i) the earlier mark registered with the Deutsches Patent- und Markenamt is OMNICARE and (ii) MNICARE has not been registered with it as a mark. According to the applicant, since those documents were not produced beforehand, during the procedure before the Board of Appeal, they must be declared inadmissible.
26      Moreover, the applicant submits, in essence, that those two documents do not, in any event, support the arguments raised by OHIM in the present case in so far as one of them, namely the one concerning the term ‘omnicare’, postdates the correction to the earlier mark made on 24 July 2008 by the Deutsches Patent- und Markenamt, and the other document relates to a search conducted using the term ‘mnicare’, which has never been registered.
27      Third, the applicant submits that the intervener annexed to its response four documents – one being a communication from the Deutsches Patent- und Markenamt dated 26 August 2008 which states that the earlier mark had been corrected and that its correct denomination was ‘omnicare’, and judgments delivered at first instance and on appeal by German courts in the context of a dispute between the applicant and the intervener relating to an application for the annulment of that mark on grounds of lack of use – which seek to establish that the earlier mark was indeed OMNICARE, but which, owing to the failure to produce them beforehand during the procedure before the Board of Appeal, must be declared inadmissible.
28      Moreover, the applicant maintains, in essence, that in any event those documents do not support the arguments raised by the intervener in the present case. In its view, in spite of the change made to the earlier mark in 2008, the agent of the Deutsches Patent- und Markenamt perceived that mark, when it was registered in 1995, as being MINICARE and the first letter of the sign as being ‘m’ and not ‘o’. Therefore, that is still how the earlier mark is understood when it is seen for the first time on the market.
29      According to the applicant, the Board of Appeal was thus wrong to conclude that the marks at issue were similar.
30      OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
31      The Court notes that, before the Opposition Division, the applicant raised the same arguments as those which it raises before the Court in relation to the way in which the earlier mark is perceived by the relevant public.
32      Although the Opposition Division rejected the opposition, it did not, however, uphold the applicant’s arguments in that regard and considered that the earlier mark was OMNICARE, in which the letter ‘o’ is stylised and constitutes a figurative element.
33      The intervener appealed against the decision of the Opposition Division but without calling into question the latter’s reasoning in relation to the visual and phonetic similarity of the signs at issue and the conceptual identity of their common element ‘omnicare’.
34      The applicant did not participate in the procedure before the Board of Appeal and thus did not reiterate in that procedure its arguments relating to the way in which the earlier mark was perceived by the relevant public.
35      On that point, the Board of Appeal merely upheld the findings of the Opposition Division and thus considered that the earlier mark was perceived by the relevant public as being OMNICARE.
36      Moreover, the Court notes that, in point 5 of the contested decision, the Board of Appeal stated that the Opposition Division had taken account of decisions which had been given by German courts, at first instance and on appeal, in the context of a dispute between the applicant and the intervener concerning an application for the annulment of that mark on grounds of lack of use.
37      The applicant maintains that the evidence furnished by the intervener in that regard is inadmissible.
38      The Court notes that, as stated in Article 65(2) of Regulation No 207/2009, the Court may annul or alter a decision of a Board of Appeal of OHIM only on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of the Regulation or of any rule of law relating to their application, or misuse of power. It follows, in particular, from that provision that the Court may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. By contrast, the Court may not annul or alter that decision on grounds which are revealed after its adoption. It is also apparent from that provision that, as consistently held by the Court, facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the Courts of the European Union. The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing its application of European Union law, particularly in the light of facts which were submitted to that board. By contrast, the Court cannot carry out such a review by taking into account matters of fact newly produced before it (see Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraphs 52 to 54, and the case‑law cited).
39      Therefore, the applicant wrongly submits that the decisions of the German courts produced by the intervener are inadmissible items of evidence since they were not furnished during the procedure before the Board of Appeal. Those items are factual evidence submitted by the intervener before the Opposition Division and, as is evident from the latter’s decision, constitute evidence of which the Board of Appeal was aware and featured among the evidence on which it based its assessment.
40      Consequently, the Court may take account of those decisions.
41      The German courts too considered that the earlier mark was OMNICARE and not MNICARE or MINICARE.
42      It is thus established that the Opposition Division, the Board of Appeal and the two German courts considered that the earlier mark was perceived by the relevant public as being OMNICARE.
43      None the less, the applicant continues to submit that the earlier mark is perceived by the relevant public as being MNICARE, preceded by a logo representing a solid circle with a number of overlying half-shaded circles. However, it does not submit any evidence to support its argument that the relevant public perceives and will continue to perceive the earlier mark in the same way as the official who registered it in 2005.
44      The official of the Deutsches Patent- und Markenamt registered the word ‘minicare’ and not the word ‘mnicare’, and did so without inserting any form of logo in front of that word element. In other words, the official did not perceive the earlier mark as being MNICARE, preceded by a logo, as submitted by the applicant.
45      The applicant’s argument in relation to the way the earlier mark is perceived by the relevant public, which is substantiated only by that registration and which has been shown to be erroneous in any event as it contains an additional ‘i’ between the ‘m’ and the ‘n’, thus does not convince the Court.
46      Consequently, the Court finds that the Board of Appeal was right to consider that the earlier mark was perceived as being OMNICARE by the relevant public, and there is no need for the Court to give judgment on either the admissibility of the applicant’s argument or on the admissibility of the evidence submitted by OHIM and the intervener with a view to establishing that the registration of the earlier mark was corrected by the Deutsches Patent- und Markenamt in August 2008 to read OMNICARE.
47      Moreover, in so far as concerns the comparison of the earlier mark and the mark applied for, it is apparent from the decision of the Opposition Division, whose reasoning was approved by the Board of Appeal, that the marks at issue are visually similar in so far as they both contain the word ‘omnicare’. The Opposition Division considered that the figurative element which the earlier mark contains, namely the stylised letter ‘o’, was not visually striking and did not substantially alter the perception of the word ‘omnicare’. It stated that the Community trade mark applied for contained two additional words, namely ‘clinical’ and ‘research’, but that the first word was ‘omnicare’, just as in the earlier mark. As regards the phonetic similarity of the conflicting signs, the Opposition Division noted that the first word was identical in both signs, which rendered them similar to a medium degree in the light of the words ‘clinical’ and ‘research’ which form part of the Community trade mark applied for. Furthermore, in the view of the Opposition Division, since the marks contain an identical word, they will be perceived, on a conceptual level, as being identical and as meaning ‘total care’ by the relevant public, which would be made up of experts in the medical and pharmaceutical professions in Germany. In its view, given that the element ‘clinical research’ in the mark applied for is descriptive of the nature of the services at issue and, consequently, devoid of distinctive character, the Opposition Division considered that they would have little influence on the overall conceptual perception of the signs at issue.
48      The Court notes that the applicant has not called that analysis into question and has itself stated, in point 10 of its application, that the inclusion of the element ‘clinical research’ added little to the analysis in that regard.
49      Therefore, that analysis of the comparison of the signs at issue must be validated.
50      It follows that, the Board of Appeal was right to consider that the marks at issue were similar both visually and phonetically and that they were conceptually identical in relation to the common element ‘omnicare’ of the signs (point 21 of the contested decision).
51      The first complaint of the applicant’s single plea must consequently be rejected.
Genuine use of the earlier mark
Arguments of the parties
52      The applicant submits, in essence, that the intervener’s services were provided free of charge, which the latter has not disputed.
53      According to the applicant, the Court of Justice has held that, where the proprietor of a mark affixes that mark to items that it gives free of charge to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items (Case C‑495/07 Silberquelle [2009] ECR I‑137, paragraph 22). It considers that the Court of Justice’s reasoning is based on the fact that as the goods in question were supplied free of charge there was no intention to maintain or create market shares for those goods, and not on the fact that a direct comparison was impossible where goods were offered free of charge.
54      The applicant submits that, in the present case, the services provided under the earlier mark were provided free of charge to purchasers – or potential purchasers – of the pharmaceutical goods that the intervener sells under the OMNIC mark, which are used by urologists to treat benign prostatic hyperplasia.
55      Since it has been found that the services provided under the earlier mark were provided free of charge, and even though they were not provided free of charge simultaneously with the sale of those pharmaceutical goods, it should be found, in the applicant’s view, that those services do not compete with other similar services on the market, since the provision of those free services does not have an independent commercial raison d’être, other than to induce potential customers to purchase the goods at a later stage or to reward them for having purchased them. Consequently, according to the applicant, the intervener failed to show genuine use of the earlier mark and the contested decision must therefore be annulled in so far as the Board of Appeal did not reject the opposition.
56      Moreover, the applicant states that the services at issue and the goods sold are not in the same commercial field, since those goods are pharmaceutical goods and the services provided free of charge are educational services.
57      Furthermore, the applicant contests the relevance, in this case, of the judgment of the Court of Justice of 12 March 2009 in Case C‑320/07 P Antartica v OHIM, not published in the ECR, in so far as a charge was made for the services at issue in that case and it was therefore irrelevant that other services were provided free of charge.
58      OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
59      It is settled case-law that genuine use must be understood to denote actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from those which have another origin (Case C-40/01 Ansul [2003] ECR I-2439, paragraphs 35 and 36, and Case C-442/07 Verein Radetzky-Orden [2008] ECR I‑9223, paragraph 13).
60      It follows from that concept of genuine use that the protection that the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings (Ansul, paragraph 59 above, paragraph 13, and Verein Radetzky-Orden, paragraph 59 above, paragraph 14).
61      According to the Court of Justice, it is essential, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to maintain the rights conferred by a mark for a given class of goods or services only where that mark has been used on the market for goods or services belonging to that class (Silberquelle, paragraph 53 above, paragraph 19).
62      The Court of Justice considers that that condition is not fulfilled where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter (Silberquelle, paragraph 53 above, paragraph 20).
63      In such a situation, those items are not distributed in any way with the aim of penetrating the market for goods in the same class. In those circumstances, affixing the mark to those items does not contribute to creating an outlet for those items or to distinguishing, in the interest of the customer, those items from the goods of other undertakings (Silberquelle, paragraph 53 above, paragraph 21).
64      It should be noted that, in the case which gave rise to the judgment in Silberquelle, paragraph 53 above, free drinks were given for purchasing clothes, drinks which, furthermore, were not – and were not intended to be – distributed commercially.
65      That is why the Court of Justice considered that those drinks were not in competition with goods in the same class, since they were not distributed in any way with the aim of penetrating the drinks market.
66      By contrast, in its judgment in Antartica v OHIM, paragraph 57 above, concerning Nasdaq indices, in respect of which it was claimed that genuine use of the earlier mark was not established on the ground that the indices were provided free of charge in the press and on television, whereas the use of a trade mark is based on the premise that the goods or services for which it is registered are paid for, the Court of Justice held as follows:
‘… even if part of the services for which the earlier mark is registered are offered by The Nasdaq Stock Market free of charge, that does not of itself mean that that commercial company will not seek, by such use of its trade mark, to create or maintain an outlet for those services in the Community, as against the services of other undertakings.
… the Nasdaq indices refer to the stock exchange price quotation and financial services provided by The Nasdaq Stock Market, covered by the earlier mark and in respect of which it was registered’ (paragraphs 29 and 30 of the judgment).
67      Consequently, it follows from the case‑law of the Court of Justice that the fact that goods and services may be offered free of charge does not prevent genuine use from being shown.
68      However, in order to determine whether genuine use has been shown or not, it is necessary to assess whether, by such use of the mark, the undertaking seeks to create or maintain an outlet for those services in the European Union, as against the services of other undertakings. That will not be the case if those services do not enter into competition with services offered on the market by other undertakings, that is to say if they are not – and are not intended to be – offered commercially.
69      In the present case, it should be noted that the services offered by the intervener for which the use of the earlier mark is established are the provision of medical consultancy for medical practice, namely for urological practice, distribution of literature and printed matter for doctors for advertising use, namely urologists, and organisation of lectures, seminars, expositions and fairs for doctors, namely urologists.
70      Even if it cannot be ruled out that the ultimate goal of such services is to encourage the relevant public to purchase or prescribe medicinal products produced by the intervener, they are none the less in competition with other similar services on the market, in particular when they are supplied by undertakings present on the medicinal products market, which may also provide those services free of charge.
71      Consequently, it must be found that, by using its mark in such a way, the applicant seeks to create or maintain an outlet for those services in the European Union, on a market on which other undertakings are present.
72      Since the applicant does not dispute the evidence furnished by the intervener in support of the use of the earlier mark, but merely the effect that providing the services concerned free of charge has on the determination as to whether that mark was put to genuine use, the Court finds that the Board of Appeal was right to consider that it was appropriate to confirm the findings of the Opposition Division that genuine use had been shown.
73      Consequently, the second complaint raised by the applicant in support of its single plea must be rejected.
Comparison of the services at issue
Arguments of the parties
74      The applicant submits, in essence, that the mark which it seeks to have registered relates to services which are not aimed at urologists and that the Board of Appeal wrongly called into question the effectiveness of that limitation even though its validity was not at issue.
75      Moreover, it considers that, if the intervener wished to call the validity of that limitation into question, it should have done so outside of the opposition proceedings.
76      It adds that a similar limitation was imposed on the earlier mark, since it had been shown that the genuine use of that mark was limited and that, consequently, there is nothing preventing the mark which it seeks to have registered from being limited in the same way.
77      In the applicant’s view, the Board of Appeal thereby implicitly negated the limitation placed upon the specification of the earlier mark.
78      Moreover, the applicant submits, in essence, that such a limitation acts as a limitation to the claimed rights rather than an actual limitation on the market, since there is nothing to prevent services from being provided which fall outside of the specification of the mark. Thus, in its view, the limitation placed upon the earlier mark does not mean that the services for which the intervener registered that mark cannot be supplied to people who fall outside of that limitation. Similarly, the limitation placed upon the applicant’s mark does not prevent it from supplying its services to people who fall outside of the described specification; the only consequence in that case would be that it has no trade mark rights.
79      The applicant claims that the limitation thus acts as a ‘demarcation agreement’ between the services which may be properly provided within the scope of each mark. It maintains that, given the limitation on the scope of the services sought to be registered, it is not in a position to offer any research to urologists, and so its services are not similar, or even complementary, to those offered by the intervener.
80      The applicant also submits, in essence, that the consumers of the services at issue are fundamentally different.
81      Thus, in its view, it is irrelevant that articles directed at different relevant publics might appear in the same journal, since no attention would be paid to articles that appealed to one relevant public by members of another, separate relevant public.
82      Moreover, according to the applicant, the intervener’s services are aimed at urologists, while the services in respect of which it sought to register the mark are aimed at pharmaceutical companies and governmental or international organisations. In that regard, the fact that those entities are comprised of people does not imply that a conflict will arise, since those people are acting in their roles as members of those entities, and not as urologists.
83      Finally, the applicant submits that the trade channels through which the services would be procured are different. In its view, the services at issue are consequently neither in competition with each other, nor complementary to each other.
84      OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
85      The Court notes that the services in respect of which registration of the mark was sought are the following: ‘Conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals’.
86      First, as OHIM rightly notes in the contested decision, the Board of Appeal did not call into question the validity of the limitation put in place by the applicant, but merely stated that it was unable to make a clear distinction between the services at issue whereby it could consider that those services were not similar.
87      Second, the Court finds that the applicant does not dispute that the services at issue are similar to a very large extent, but merely states that, in the light of its limitation, the potential customers will be different, urologists being the only persons to whom the intervener’s services are aimed, whereas the applicant targets pharmaceutical companies and governmental and international organisations, ‘excluding urologists’. Moreover, it infers from this that the distribution channels of those services will therefore be different.
88      However, the limitation by the applicant in relation to urologists is not formulated as meaning that its services would target services aimed at all doctors – or health professionals – excluding urologists, but rather, in accordance with the applicant’s own claims, as meaning that they would target services aimed at pharmaceutical companies and governmental or international organisations, ‘excluding urologists’. However, the categories of persons at whom those services are aimed clearly do not include urologists and from which they can thus not be excluded.
89      Consequently, it must be found that the limitation relating to urologists is manifestly an artificial one.
90      Moreover, although it is possible to offer services to urologists, as does the intervener, without thereby ruling out that health professionals other than urologists might also avail themselves of its services, it is clearly artificial, however, to claim to be able to conduct, in a general manner, ‘clinical and laboratory research in the field of pharmaceuticals’ and exclude urologists from the potential recipients of those services.
91      It cannot be ruled out that clinical and laboratory research for certain pharmaceutical products, even if not medicinal products used in urology, may be of interest to urologists or influence their practice, since urologists cannot be excluded as a target group in larger-scale or horizontal research, for example, into cancer, infections, stem cells or gene therapy, as rightly pointed out by OHIM.
92      Furthermore, as pointed out by the intervener, urology is not practised only by urologists, but also, and in particular, by general practitioners when treating benign urinary illnesses, yet the limitation by the applicant does not apply to general practitioners.
93      Consequently, it must be found that the Board of Appeal was right to conclude that the services at issue were similar, in spite of the limitation by the applicant.
94      The third complaint raised by the applicant must therefore be rejected.
95      In conclusion, the Board of Appeal was thus right to consider, in essence, first, that the signs at issue were highly similar visually, second, that the phonetic similarity between them was average, and third, that, since they are made up of a common element, namely ‘omnicare’, they would be perceived as being conceptually identical by the relevant public, which is made up of experts in the medical and pharmaceutical professions in Germany. The Board of Appeal was also right to consider that the services at issue were similar, at least to a low degree. Consequently, the Board of Appeal’s assessment must be approved in so far as it concluded that the relevant consumer in Germany would inevitably connect the marks at issue and assume that the services marketed under them came from the same or economically linked undertakings and, therefore, that there was a likelihood of confusion.
96      Since none of the complaints raised by the applicant in support of its single plea is founded, the action must be dismissed.
Costs
97      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
98      As the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and by the intervener, in accordance with the form of order sought by them.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Omnicare, Inc. to pay the costs.
Azizi
Cremona
Frimodt Nielsen
Delivered in open court in Luxembourg on 9 September 2011.
[Signatures]
* Language of the case: English.