Case C-95/06 P: Appeal brought on  15 February 2006  by Bausch & Lomb Inc. against the judgment of the Court of First Instance delivered on  17 November 2005  in Case T-154/03: Biofarma SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2006-05-06
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), trade-mark law

C 108/4

EN

Official Journal of the European Union

6.5.2006

Action brought on 13 February 2006 — Commission of
the European Communities v Ireland

Other parties to the proceedings: 1. Biofarma SA; 2. Office for
Harmonisation in the Internal Market
(Trade Marks and
Designs)

(Case C-88/06)

(2006/C 108/05)

Language of the case: English

Parties

Applicant: Commission of the European Communities (repre-
sented by: J. Enegren and I. Kaufmann-Bühler, Agents)

Defendant: Ireland

The applicant claims that the Court should:

— declare that, by failing to adopt the laws, regulations and
administrative provisions necessary to comply with Direc-
tive 2001/45/EC of the European Parliament and of the
Council of 27 June 2001 amending Council Directive
89/655/EEC concerning the minimum safety and health
requirements for the use of work equipment by workers at
work (second individual Directive within the meaning of
Article 16(1) of Directive 89/391/EEC) (1), or in any event
by failing to communicate them to the Commission, Ireland
has failed to fulfil its obligations under the Directive;

Form of order sought

The appellant claims that the Court should:

— order the Contested Judgment be set aside;

— order the decision of the Third Board of Appeal of OHIM

of 5 February 2003 be restored;

— order OHIM be directed to register the mark applied for in

the name of the appellant;

— order the opponent pay the costs of this appeal and of the

application to the CFI.

— order Ireland to pay the costs.

Pleas in law and main arguments

Pleas in law and main arguments

The period within which the directive had to be transposed
expired on 19 July 2004.

The appellant submits that the judgment of the Court of First
Instance (CFI) should be set aside on the following grounds:

(1) OJ L 195, 19/07/2001, p. 46

In the Judgment, the CFI held that there was a likelihood of
confusion on the part of the public between the two marks in
issue. The appellant contends that, in reaching that conclusion,
the CFI erred in law and/or acted in breach of procedure. The
errors relied upon are summarised below.

Appeal brought on 15 February 2006 by Bausch & Lomb
Inc. against the judgment of the Court of First Instance
delivered on 17 November 2005 in Case T-154/03:
Biofarma SA v Office for Harmonisation in the Internal
Market (Trade Marks and Designs)

The CFI erred in failing to consider either properly or at all
whether the goods for which the competing marks are or are
sought to be registered are similar goods. In the premises the
CFI erred in law.

(Case C-95/06 P)

(2006/C 108/06)

Language of the case: English

Parties

Appellant: Bausch & Lomb Inc. (represented by: M. Silverleaf
QC, R. Black, B. Gerber and E. Kohner, Solicitors)

The CFI ought to have considered whether the goods for which
registration is sought are similar to those upon which use of
the conflicting mark has been established. Had the CFI done so,
it should have concluded that they are not and accordingly that
there was no basis for the application of Article 8(1)(b). Alter-
natively,
it should have concluded that there is at most a
passing similarity in kind and that such slight similarity, when
weighed in the overall balance in determining whether there is
a likelihood of confusion, requires a very high degree of simi-
larity between the conflicting marks and reasons (which were
not given) why the relevant public might expect them to come
from commercially related sources.

6.5.2006

EN

Official Journal of the European Union

C 108/5

The CFI erred in law in applying Article 8(1)(b) in its considera-
tion of the relative similarity of the competing marks. It made
its assessment not on the basis of a global assessment of the
overall impression that the marks make on the eye or ear of
the average consumer but on the basis of a minute dissection
of the linguistic and verbal characteristics of the words forming
the respective marks.

Reference for a preliminary ruling from Tribunal des
Affaires de Sécurité Sociale de Paris made on 22 February
2006 — Philippe Derouin v Union pour le recouvrement
des cotisations de sécurité sociale et d'allocations famil-
iales de Paris — Région Parisienne

the CFI should have considered the
In assessing similarity,
marks as a whole and by reference to the visual and, in particu-
lar, aural impact of the whole of the conflicting marks upon
the eye and ear of the average consumer. Further the CFI failed
to take into account the fact that the products in issue are ones
in relation to which it is common ground that one can expect
the relevant public to take significant care both in selection and
use. Had the CFI applied the correct approach, it would have
concluded that the two marks both sound and look different.

The CFI failed to identify the relevant public and accordingly
erred in law. The CFI erred in law in its application of Article
8(1)(b) in determining that patients form part of the relevant
public. The CFI ought to have concluded in accordance with
the law that the relevant public consists of medical profes-
sionals.

In carrying out its assessment of similarity, the CFI acted in a
mechanistic manner. It failed to weigh up the similarities it had
found and consider whether they led to a likelihood of confu-
sion. Instead, it assumed this was the case. Having done so, the
CFI proceeded to dismiss the differences between the respective
marks and goods as not removing that likelihood. This it did
without explaining its reasons. Accordingly, the CFI erred in
law in its application of Article 8(1)(b) as interpreted by the
ECJ and/or acted in breach of procedure, in particular Article
81 of the Rules of Procedure, in failing to state the grounds for
its decision.

The CFI erred in law by not considering the level of attention
of the average consumer of the goods concerned, and whether
this may reduce the likelihood of confusion. It should have
taken account of the particularly high level of attention exhib-
ited by the average consumer when he prepares and makes his
choice between the relevant goods and the effect this may have
on the likelihood of confusion. Accordingly, the CFI erred in its
application of Article 8(1)(b), as interpreted by the ECJ.

(Case C-103/06)

(2006/C 108/07)

Language of the case: French

Referring court

Tribunal des Affaires de Sécurité Sociale de Paris

Date lodged: 22 February 2006

Parties to the main proceedings

Applicant: Philippe Derouin.

Defendant: Union pour le recouvrement des cotisations de
sécurité sociale et d'allocations familiales de Paris — Région
Parisienne (Urssaf).

Questions referred

Is Regulation 1408/71 of 14 June 1971 (1) to be interpreted as
precluding a convention, such as the United Kingdom/France
Taxation Convention of 22 May 1968, from providing that
income received in the United Kingdom by workers resident in
France and covered by social insurance in that State is excluded
from the basis on which the ‘contribution sociale généralisée’
(CSG — general social contribution) and the ‘contribution pour
le remboursement de la dette sociale’
(CRDS — social debt
repayment contribution) levied in France are assessed?

(1) Regulation (EEC) No 1408/71 of the Council of 14 June 1971 on
the application of social security schemes to employed persons and
their families moving within the Community (OJ 1971 L 149, p. 2)