Alcon Inc. v European Union Intellectual Property Office.
Date: 2007-04-26
38. Inasmuch as, by the first part of the arguments raised under this plea, the applicant alleges that the Court of First Instance misconstrued the scope of the first subparagraph of Article 48(2) of the Rules of Procedure of that Court, it should be recalled that that provision provides that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure.
39. In the present case, paragraphs 17 to 22 of the judgment under appeal show that the Court of First Instance held that, in the absence of any new matters of fact or law, the plea submitted by the applicant at the hearing, according to which the conditions required for the earlier mark to be regarded as having been put to genuine use were not satisfied, in particular because of the low sales volume of that mark, should be rejected as inadmissible in so far as it was a new plea for the purpose of that provision in the Rules of Procedure of the Court of First Instance. In its application, the applicant had alleged that the Board of Appeal had infringed Article 43(2) and (3) of Regulation No 40/94 not in that those conditions were not satisfied, but only in that the evidence of genuine use submitted by Biofarma did not show that the earlier mark had actually been used in respect of ophthalmic products.
40. As the Advocate General observed in point 20 of her Opinion, the assessment made by the Court of First Instance is vitiated by an error in law. The line of argument which states that the conditions required for the earlier mark to be regarded as having been put to genuine use are not satisfied logically falls under the plea alleging that there is no evidence of such genuine use in respect of ophthalmic products. That line of argument, apart from being based on the infringement of the same provision of Regulation No 40/94 as that submitted in the plea in question, seeks, like that plea, to dispute that the earlier mark was actually used in the course of trade. Consequently, it may be regarded as amplifying that plea and must be held to be admissible (Case 306/81 Verros  v Parliament  [1983] ECR 1755, paragraph 9, and Case C‑66/02 Italy  v Commission  [2005] ECR I‑10901, paragraph 86).
41. However, the error in law vitiating paragraphs 17 to 22 of the judgment under appeal is not such as to invalidate that judgment and, therefore, the arguments put forward by the applicant on this issue must be set aside as inoperative. The Court of First Instance’s rejection of the line of argument relating to the conditions required for the earlier mark to be regarded as having been put to genuine use has adequate legal basis in other grounds set out in that judgment (see, to that effect, Case C‑496/99 P Commission  v CAS Succhi di Frutta  [2004] ECR I‑3801, paragraph 68, and Case C‑447/02 P KWS Saat  v OHIM  [2004] ECR I‑10107, paragraphs 46 to 51).
43. Contrary to the applicant’s submission, the Court of First Instance was fully entitled to reject as inadmissible the disputed arguments on this second ground. The applicant does not have the power to alter before the Court of First Instance the terms of the dispute, as delimited in the respective claims and allegations it and the party opposing the trade mark application have submitted (see, to that effect, Case C‑106/03 P Vedial  v OHIM [2004] ECR I‑9573, paragraph 26, and KWS Saat  v OHIM , paragraph 58).
44. First, under Article 63 of Regulation No 40/94, a Board of Appeal’s decision may be annulled or altered only on grounds of lack of competence, infringement of an essential procedural requirement, failure to comply with the EC Treaty, with Regulation No 40/94 or with any rule of law relating to their application, or misuse of power. Accordingly, the review of that decision by the Community Courts is confined to a review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within OHIM, requiring new factual submissions made to that body to be taken into consideration (see, to that effect, Case C‑214/05 P Rossi  v OHIM  [2006] ECR I-7057, paragraph 50, and Case C-29/05 P OHIM  v Kaul  [2007] ECR I‑0000, paragraph 54).
53. According to case-law, the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, in particular, Case C‑299/99 Philips  [2002] ECR I‑5475, paragraph 30, and Case C‑37/03 P BioID  v OHIM  [2005] ECR I‑7975, paragraph 27).
54. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, to that effect, Case C‑39/97 Canon  [1998] ECR I‑5507, paragraph 28).
55. Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see, to that effect, Canon , paragraph 29, and Case C‑342/97 Lloyd Schuhfabrik Meyer  [1999] ECR I‑3819, paragraph 17).
56. In the present case, having regard to that case-law, the Court of First Instance was fully entitled to hold, which indeed is not disputed by any party in these appeal proceedings, that the healthcare professional at issue must be included in the relevant public for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, the function of the trade mark as an indication of origin being also relevant to intermediaries who deal with the goods commercially in so far as it will tend to influence their conduct in the market (see, to that effect, Case C‑371/02 Björnekulla Fruktindustrier [2004] ECR I‑5791, paragraphs 23 and 25).
59. It is settled case-law that the perception of the marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion ( Lloyd Schuhfabrik Meyer , paragraph 25, and Case C‑361/04 P Ruiz-Picasso and Others  v OHIM  [2006] ECR I-643, paragraph 38).
60. In addition, the Court of Justice has already held that the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind ( Lloyd Schuhfabrik Meyer , paragraph 26, and judgment of 23 September 2004 in Case C‑107/03 P Procter & Gamble  v OHIM , not published in the ECR, paragraph 44).
62. In this connection, it should be recalled that the Court has already ruled that where the goods or services with which the registration application is concerned are intended for all consumers, the relevant public must be deemed to be composed of the average consumer, reasonably well‑informed and reasonably observant and circumspect (Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble  v OHIM  [2004] ECR I‑5173, paragraph 33, and Case C-329/02 P SAT.1  v OHIM  [2004] ECR I‑8317, paragraph 24).
65. The decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are led to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the Community judicature and not on the basis of a previous decision-making practice ( BioID  v OHIM , paragraph 47, and Case C‑173/04 P Deutsche SiSi‑Werke  v OHIM  [2006] ECR I‑551, paragraph 48).
71. The applicant cannot require the Court to substitute its own assessment for that of the Court of First Instance in that regard. It is settled case-law that the effect of Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice is that an appeal lies on points of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C‑206/04 P Mülhens  v OHIM  [2006] ECR I‑2717, paragraph 41, and Rossi  v OHIM , paragraph 26).
89. Contrary to what is submitted by OHIM, by thereby casting doubt on the reasoning followed by the Court of First Instance in its application of that provision the applicant is thus raising a legal issue concerning the Court of First Instance’s application of Community law. Accordingly, this part of the second plea is admissible.
97. Pursuant to case-law, the issue whether the grounds of a judgment of the Court of First Instance are contradictory or inadequate is a question of law which is amenable, as such, to judicial review on appeal (Case C-401/96 P Somaco  v Commission  [1998] ECR I-2587, paragraph 53, and Case C-446/00 P Cubero Vermurie  v Commission  [2001] ECR I-10315, paragraph 20).
100. In the light of those considerations, in spite of the failure to give adequate reasons which vitiates paragraphs 65 and 69 of the judgment under appeal, there is no cause for annulment of that judgment since, in any event, the grounds given are sufficient to provide a basis for the operative part, namely the Court of First Instance’s dismissal of the appeal directed against the contested decision (see, to that effect, Commission  v CAS Succhi di Frutta , paragraph 68, and KWS Saat  v OHIM , paragraphs 46 to 51).