Case T-425/03

AMS Advanced Medical Services GmbH

v

Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for the Community trade mark AMS Advanced Medical Services — Earlier national word mark AMS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 — Request for proof of genuine use made for the first time before the Board of Appeal — Article 43(2) and (3) of Regulation No 40/94’

Judgment of the Court of First Instance (Fifth Chamber), 18 October 2007 II-4270

Summary of the Judgment

Where it is based on Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, opposition to the registration of a Community trade mark requires the Office for Harmonization in the Internal Market (Trade Marks and Designs) to adjudicate on whether the conflicting marks are identical or similar and whether the goods and services covered by those marks are identical or similar. Consequently, the fact that the party which requests the Court of First Instance to set aside the decision of the Board of Appeal which upheld opposition proceedings brought against registration of the mark applied for did not dispute, before the Board of Appeal, the similarity of the conflicting marks cannot in any way divest the Office of the power to adjudicate on whether those marks were similar or identical Likewise, therefore, that fact cannot deprive that party of the right to challenge, in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point. (see paras 28, 29)

There is, for the relevant public, consisting of average consumers in the United Kingdom, and professionals and specialists of the medical sector in the United Kingdom, a likelihood of confusion between the figurative sign ‘AMS Advanced Medical Services’, in respect of which registration as a Community mark was sought for ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’ included in class 5 of the Nice Agreement and for ‘hospitals, convalescent homes, sanatoriums; medical, hygienic and beauty care; medical research, bacteriology and chemical research; development of medicines, foodstuffs with pharmaceutical properties and other health care products, and conducting medical and clinical examinations, consultancy and support for others for these activities; scientific and industrial research, in particular medical, bacteriological or chemical research; opticians’ services; consultancy for health care professionals in the development, establishing and conducting of therapy programmes and the testing of the aforesaid therapy programmes by means of studies' in Class 42 of the same agreement, and the earlier national word mark AMS registered for ‘surgical, medical and veterinary apparatus and instruments; suture materials; medical devices for the control of urological disorders and impotence; prosthetic articles; penile prostheses; urinary prostheses; artificial sphincters; parts and fittings for all the aforesaid goods’, all included in Class 10 of that agreement. The goods and services in respect of which registration of the mark is sought are similar to the goods and services covered by the earlier mark, given the close link between the goods and services in question in respect of their intended use, and the complementary nature of the goods in relation to the services. Moreover, the conflicting signs are similar because the dominant element of the word sign of the trade mark applied for and the only element of the earlier trade mark were identical. (see paras 51, 65, 87, 89)

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, the comparison must be made between the signs as they were registered or as they appear in the trade mark application, regardless of whether they are used alone or together with other marks or indications. (see para. 91)