Longevity Health Products v OHMI - Tecnifar (E-PLEX) (Intellectual property) [2011] EUECJ T-161/10 (24 May 2011)

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(Community trade mark – Opposition proceedings – Application for Community word mark E-PLEX – Earlier national word mark EPILEX – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

Longevity Health Products, Inc., established in Nassau (Bahamas), represented by J. Korab, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by R. Pethke, acting as Agent,

Tecnifar – Industria Tecnica Farmaceutica, SA, established in Lisbon (Portugal),

1 On 22 May 2006, the applicant, Longevity Health Products, Inc., filed an application for registration of a Community trade mark 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)).

3 The goods in respect of which registration was sought are, inter alia, contained in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and, after the restriction made during the proceedings before OHIM, correspond to the following description: ‘ Pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system; sanitary preparations, dietetic substances adapted for medical use, preparations of trace elements for human and animal use, food supplements for medical purposes, mineral food supplements, vitamin preparations’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2006/050 of 11 December 2006.

5 On 12 March 2007, Tecnifar – Industria Tecnica Farmaceutica, SA filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier national word mark EPILEX, registered in Portugal on 19 April 2000 under number 234643 in respect of goods in Class 5 corresponding to the following description: ‘Anti-epileptics’.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

8 On 20 May 2009, the Opposition Division allowed the opposition for the following goods: ‘Pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system; dietetic substances adapted for medical use, preparations of trace elements for human and animal use, food supplements for medical purposes, mineral food supplements, vitamin preparations’. By contrast, the Opposition Division rejected the opposition for the other goods in Class 5, namely ‘sanitary preparations’.

9 On 15 June 2009, the applicant filed an appeal with OHIM against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

10 By decision of 5 February 2010 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled in part the decision of the Opposition Division and dismissed in part the appeal. In essence, the Board of Appeal held that the relevant public was composed of professionals in the pharmaceutical and medical field as well as end consumers in Portugal and that the attentiveness of that public, at the moment of purchase, was above average. It held that ‘anti-epileptics’ and ‘pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system’ were highly similar, that those ‘anti-epileptics’ and ‘dietetic substances adapted for medical use, preparations of trace elements for human and animal use, food supplements for medical purposes’ were similar to an average degree, and that ‘anti-epileptics’ and ‘vitamin preparations and mineral food supplements’ were of low similarity. The Board of Appeal also stated that the signs at issue were visually and phonetically similar to an average degree and that they were conceptually not comparable. Finally, it held that the inherent distinctiveness of the earlier mark was average. Consequently, the Board of Appeal concluded that there was a likelihood of confusion for the goods which are highly similar. By contrast, it concluded that, for the goods that are similar to an average or low degree, the likelihood of confusion had to be excluded. Accordingly, the Board of Appeal annulled the decision of the Opposition Division in this regard.

13 The applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.

14 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

15 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T-�162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-�2821, paragraphs 30 to 33 and the case-law cited).

16 Whether there is a likelihood of confusion between the marks at issue must be determined in the light of those considerations.

17 It should be noted that the applicant does not challenge the analysis of the Board of Appeal, according to which the relevant public consists of professionals in the pharmaceutical and medical field as well as end consumers in Portugal. Nor does the applicant challenge the conclusion of the Board of Appeal that, in respect of healthcare products, the consumer’s attentiveness at the moment of purchase is above average.

18 According to settled case-law, in order to assess the similarity between the goods or services concerned, all the relevant factors of the relationship between them should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-�443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-�2579, paragraph 37 and the case-law cited).

19 The applicant claims that in response to the opposition, it deleted from its Community trade mark application the category of anti-epileptic medicines and that, therefore, there is no longer any likelihood of confusion.

21 In this case, as OHIM observes, the applicant does not expressly dispute the findings of the Board of Appeal with regard to the degree of similarity of the goods in question.

22 Assuming that the applicant’s argument relating to the restriction of the goods covered by its application is, in fact, intended to call those findings into question, it should be noted that the fact that the goods covered by the earlier trade mark are expressly excluded from the list of the goods covered by the trade mark application is not sufficient, in itself, to exclude any similarity of the goods in question and, therefore, to exclude any likelihood of confusion (see, to that effect, judgment of 11 June 2009 in Case T-33/08 Bastos Viegas v OHIM – Fabre Médicament (OPDREX), not published in the ECR, paragraph 27).

23 Furthermore, as the Board of Appeal stated in paragraph 18 of the contested decision, it should be noted that the goods in question are of the same nature, namely pharmaceutical preparations, have the same purpose or intended purpose, namely to treat human health problems, are aimed at the same consumers, namely healthcare professionals and patients, and use the same distribution channels, namely health centres and pharmacies.

24 However, the consequence of the restriction of the goods covered by the trade mark application is that the goods at issue are distinguished by their therapeutic indications. Accordingly, the goods covered by the earlier trade mark are intended to treat epilepsy, whereas the medicinal products designated by the trade mark applied for are intended to treat conditions other than diseases in connection with the central nervous system, including epilepsy.

25 In the light of the above, the Court finds that, on the basis of a global approach, the similarities between the goods outweigh the differences and concludes that there exists some degree of similarity between the goods in question (see, to that effect, judgments of 13 February 2008 in Case T-146/06 Sanofi-Aventis v OHIM – GD Searle (ATURION), not published in the ECR, paragraphs 32 to 35, and of 16 June 2010 in Case T-487/08 Kureha v OHIM – Sanofi-Aventis (KREMEZIN), not published in the ECR, paragraphs 75 and 76).

26 As regards the Board of Appeal’s assertion that the degree of similarity between the goods is high, it should be noted that, where it is called upon to assess the legality of a decision of a Board of Appeal of OHIM, the Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the Court (Case C-�16/06 P Éditions Albert René v OHIM [2008] ECR I-�10053, paragraph 48, and Case T-�148/08 Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instrument for writing) [2010] ECR I-�0000, paragraph 129). In the present case, contrary to what the Board of Appeal indicated in paragraph 18 of the contested decision, the degree of similarity between the goods in question cannot be regarded as high since their therapeutic indications are different (ATURION, paragraph 35, and KREMEZIN, paragraph 77).

27 That factor is not, however, such as to call into question the global assessment of the likelihood of confusion, as is apparent from paragraphs 39 to 45 below.

28 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-�334/05 P OHIM v Shaker [2007] ECR I-�4529, paragraph 35 and case-law cited).

29 The applicant claims that the Board of Appeal erred in finding that the word signs at issue had an average degree of phonetic and visual similarity. It argues that, phonetically, there is a substantial difference between the signs at issue that can be observed by everyone. It is claimed that, for the consumer, the phonetic impression of a mark is more important than the visual impression, particularly as he will have only a vague memory of the trade marks. Moreover, the applicant states that, visually, the signs at issue have similar letters in a different order and are not written in the same typeface. With regard to the conceptual similarity of the signs at issue, the applicant does not dispute the finding of the Board of Appeal that the conceptual comparison of the signs is not relevant, as neither of the signs has a meaning in Portuguese.

30 OHIM disputes the applicant’s arguments regarding the visual and phonetic similarity of the signs at issue.

31 At the outset, it should be noted that the applicant’s assertion that the phonetic impression left by a trade mark is more important than the visual impression is wholly unsubstantiated.

32 Visually, the signs at issue are nearly the same length and have five letters in common, ‘e’, ‘p’, ‘l’, ‘e’ and ‘x’, placed in the same order. The signs begin with the same letter and end with ‘lex’.

33 However, as the Board of Appeal noted, the presence of the character ‘-’ in the trade mark applied for has the consequence that that mark seems to be composed of two elements whereas the earlier mark consists of one word only.

34 Therefore, the Board of Appeal was correct to find that the signs at issue had an average degree of visual similarity.

35 That finding cannot be affected by the claimed difference in typeface between the signs at issue, since the protection that arises from the registration of a word mark relates to the word indicated in the application for registration and not to the particular graphic or stylistic aspects that that mark might have (see judgment of 21 January 2009 in Case T-307/07 Hansgrohe v OHMI (AIRSHOWER), not published in the ECR, paragraph 39 and case-law cited).

36 Phonetically, as the Board of Appeal noted, the marks at issue share the same first syllable ‘e’ but the mark applied for has one other syllable only, ‘plex’, whereas the earlier mark is composed of two other syllables, ‘pi’ and ‘lex’. However, the fact that the number of syllables is different is not sufficient to rule out a phonetic similarity between the signs (see judgment of 28 October 2010 in Case T-131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 39 and case-law cited). Furthermore, the signs at issue end with the same sound, ‘lex’.

37 Taking into account those similarities and differences, the Board of Appeal was entitled to conclude that the signs at issue have an average degree of phonetic similarity.

38 Conceptually, it is not disputed that, as the Board of Appeal noted in paragraph 24 of the contested decision, comparison of the signs at issue is not relevant as they have no meaning in Portuguese.

39 As recalled in paragraph 15 above, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services designated.

40 The applicant denies that there is a likelihood of confusion, because of the visual and phonetic differences between the signs at issue and differences between the goods covered by its application and those covered by the earlier trade mark. It states that it restricted its Community trade mark application specifically so that it did not cover the medicinal products covered by the earlier trade mark. It also states that it does not use the trade mark applied for in relation to anti-epileptic medicines and that it does not intend to do so.

42 It has been found above that the goods in question have some degree of similarity and that the signs at issue have an average degree of visual and phonetic similarity, whilst their conceptual comparison is not relevant. Furthermore, it is not disputed that, as the Board of Appeal noted, the distinctiveness of the earlier trade mark is average. In these circumstances, and on the basis of a global approach, it must be concluded that there is a risk that the relevant public might believe that the goods bearing the trade mark applied for come from the undertaking that is the proprietor of the earlier trade mark or from an economically linked undertaking.

43 The fact that the level of attention of the relevant public is above average, since that public is composed of healthcare professionals and end consumers of health products, is not sufficient to exclude the possibility that that public might believe that the goods in question come from the same undertaking or, where relevant, from economically linked undertakings (see, to that effect, judgment of 16 December 2010 in Case T-363/09 Longevity Health Products v OHMI – Gruppo Lepetit (RESVEROL), not published in the ECR, paragraph 33 and case-law cited).

44 Furthermore, the argument that the applicant does not use, and does not intend to use, the trade mark applied for in relation to anti-epileptic medicines is ineffective since that restriction already appears in the list of goods covered by the trade mark application and, as is apparent from the reasoning set out above, is not sufficient to exclude any similarity between the goods and, therefore, any likelihood of confusion.

45 It follows from all the foregoing that the applicant’s plea in law is unfounded. Consequently, the action must be dismissed in its entirety.

46 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.

47 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Longevity Health Products v OHMI - Tecnifar (E-PLEX) (Intellectual property) [2011] EUECJ T-161/10 (24 May 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T16110.html Cite as: [2011] EUECJ T-161/10

Court of Justice of the European Communities (including Court of First Instance Decisions)