ORDER OF THE PRESIDENT OF THE COURT

19 July 2012 ( )

(Application for interim measures – Appeal – Application for interim measures – Community trade mark)

In Joined Cases C‑587/11 P-R and C‑588/11 P-R,

APPLICATIONS for interim measures under Article 279 TFEU, brought on 23 December 2011,

Omnicare, Inc., established in Covington (United States), represented by M. Edenborough, QC,

applicant in the appeals,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J.F. Crespo Carrillo, acting as Agent,

defendant at first instance,

Astellas Pharma GmbH, established in Munich (Germany), represented by L. Polo Carreño, lawyer,

intervener at first instance,

THE PRESIDENT OF THE COURT,

after hearing the Advocate General, P. Mengozzi,

makes the following

Order

1 By its appeals, Omnicare, Inc. seeks the annulment of the judgments of the General Court of the European Union of 9 September 2011 in Case T‑289/09 Omnicare v OHIM – Astellas Pharma (OMNICARE CLINICAL RESEARCH), and in Case T‑290/09 Omnicare v OHIM – Astellas Pharma (OMNICARE) (‘the contested judgments’), whereby the latter dismissed its actions seeking annulment of the decisions of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), of 14 May 2009 (Cases R 401/2008-4 and R 402/2008‑4, ‘the contested decisions’), concerning opposition proceedings between Yamanouchi Pharma GmbH and Omnicare, Inc., rejecting its applications for registration of Community trade marks of, respectively, the word signs ‘OMNICARE CLINICAL RESEARCH’ and ‘OMNICARE’.

2 By applications lodged at the Registry of the Court of Justice on 23 December 2011, the applicant lodged two applications for interim measures under Article 279 TFEU, seeking an order prohibiting OHIM from taking measures implementing the contested judgments until the Court of Justice of the European Union has ruled on the appeals lodged against those judgments.

3 OHIM requests the Court to dismiss the applications for interim measures and order the applicant to pay the costs.

4 As the cases are connected by reason of their subject-matter, it is appropriate to join them in accordance with Article 43 of the Court’s Rules of Procedure for the purposes of the present order.

Background to the dispute

5 On 19 June 2000, the applicant filed an application for registration of a Community trade mark at OHIM, under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). That regulation was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the date of the facts of the present dispute, the latter remains governed by Regulation No 40/94.

6 The marks of which registration was sought are the following word signs: ‘OMNICARE CLINICAL RESEARCH’ and ‘OMNICARE’.

7 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’.

8 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, a notice of opposition to registration of the marks applied for in respect of the services referred to, on the basis of previous German trade mark No 39401348.

9 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’.

10 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94.

11 The applicant required Astellas Pharma to provide proof, pursuant to Article 43(2) and (3) of Regulation No 40/94, 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.

12 On 20 December 2007, the Opposition Division of OHIM rejected the oppositions in their entirety.

13 On 19 February 2008, Astellas Pharma filed a notice of appeal at OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94.

14 By its contested decisions, OHIM found, first, that the signs in question were similar on the visual and phonetic levels and almost identical on the conceptual level and, secondly, that the services in question were similar, at least to a low degree. It therefore concluded that there was a likelihood of confusion.

15 By application lodged at the Registry of the General Court on 24 July 2009, the applicant sought the annulment of the contested decisions. In support of its action, it relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 40/94.

16 By the contested judgments, the General Court held that, by upholding the actions against the decision of the Opposition Division of OHIM by reason of the similarity of the services in question and the likelihood of confusion, the Board of Appeal of OHIM did not infringe Article 8(1)(b) of Regulation No 207/2009. It therefore dismissed the applicant’s actions for annulment.

Forms of order sought and arguments of the parties

17 By its applications for interim measures, the applicant requests the Court to prohibit OHIM from acting in pursuance of the contested judgments, namely from dismissing its applications for a Community trade mark, until such time as the Court of Justice has ruled on the appeals against those judgments.

18 The applicant maintains that, by informing it by email on 13 December 2011 that, first, in accordance with Article 60 of the Statute of the Court of Justice of the European Union, appeals in intellectual property matters do not have suspensive effect, and that, second, the General Court having dismissed its action, its applications for registration of Community trade marks could not be upheld, an agent of OHIM had clearly indicated that OHIM considered that it could reject the said applications at any time.

19 The applicant argues that, if its applications for registration were rejected, it would suffer damage by reason of the loss of their priority date, such damage being never capable of being fully compensated for in financial terms.

20 The applicant argues that the intention which it attributes to OHIM, as supposedly expressed by means of the email from its agent, is contrary to the position which OHIM had adopted in a number of other cases, in which the latter had waited for the Court of Justice to give its judgment before implementing the judgment of the General Court under appeal.

21 Moreover, the applicant submits, implementation by OHIM of the contested judgments without waiting for the result of the appeals may lead to rendering the latter devoid of purpose. Thus, in the event of the Court annulling the contested judgments, it would be impossible to ‘undo’ the act of rejecting the applications for registration which had taken place in the meantime and the priority date of those applications would be lost. Furthermore, OHIM would be placing itself in a situation preventing it from implementing the judgment of the Court of Justice and risking a compensation action.

22 Finally, the applicant argues that the position which it attributes to OHIM is erroneous in law, inasmuch as the latter is based on Article 60 of the Statute of the Court of Justice which provides that an appeal does not have suspensive effect. According to the applicant, Regulation No 207/2009 applies in this case, Article 64(3) of which provides that, if an action has been brought before the Court, the decisions of the Boards of Appeal of OHIM do not take effect until the latter has been dismissed.

23 In its observations on the applications for interim measures, OHIM accuses the applicant of communicating incorrect information to the Court and denies that it threatened to take measures for the purposes of implementing the contested judgments. According to OHIM, the email sent by its agent on 13 December 2011 answered the request for confirmation, made by the applicant, that the registration procedure was currently in progress following an agreement reached between the parties and the withdrawal of the two oppositions. OHIM then informed the applicant that, while the appeals were pending, it could not continue with the registration process.

24 In any event, OHIM states that it cannot undertake any action in respect of the applications for Community trade mark registrations while the two appeals are pending before the Court in order to avoid situations which it would perhaps not be possible to remedy a posteriori, that is to say, after the Court has delivered the judgments.

The applications for interim measures

25 As a preliminary observation, it should be noted that the two applications for registration of a Community trade mark submitted by the applicant have been the subject-matter of rejection decisions by the Board of Appeal of OHIM, which have been confirmed by the contested judgments.

26 The applicant’s applications for interim measures thus concern the date on which the contested decisions take effect, as confirmed by the contested judgments.

27 In that regard, Article 64(3) of Regulation No 207/2009 provides that, if an action has been brought before the Court of Justice within the prescribed period, decisions of the Boards of Appeal are to take effect only as from the date of dismissal of such action.

28 It is not apparent either from the email of 13 December 2011 sent by OHIM to the applicant or, more generally, from their exchange of correspondence produced by OHIM, that the latter had indicated any intention of departing from that provision and shown an intention to reject the applications for registration without waiting for the outcome of the appeal proceedings.

29 Thus, and without there being any need to rule on the question of the application of Article 60 of the Statute of the Court of Justice raised by the applicant, it must be held that the only justification raised by the latter in support of its applications for interim measures is based on an intention which it attributes to OHIM by distorting the content of an email which was sent to it by an agent of the latter. Obviously, however, that mere allegation cannot justify the granting of interim measures.

30 In addition, and in so far as OHIM envisages taking measures without waiting for the Court to rule on the appeals brought by the applicant, it is sufficient to note that the latter has not adduced, in that eventuality, sufficient proof, as required by established case-law, of the prospect of serious and irreparable damage to its interests (see, to that effect, Order of the President of Court of Justice of 12 May 2010 in Case C‑5/10 P-R Torresan v OHIM, paragraph 17).

31 It follows from the foregoing that these applications for interim measures must be dismissed.

On those grounds, the President of the Court of Justice hereby orders:

1. The application for interim measures is dismissed.

2. Costs are reserved.

[Signatures]