Micrus Endovascular v OHMI - Laboratorios Delta (DELTA) (Judgment) [2014] EUECJ T-218/12 (10 September 2014)

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(Community trade mark - Opposition proceedings - Application for Community word mark DELTA - Earlier national and international figurative marks DELTA PORTUGAL and company name LABORATORIOS DELTA - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009)

Micrus Endovascular LLC, established in Wilmington, Delaware (United States), represented by B. Brandreth, Barrister,

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

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Laboratórios Delta L^da, established in Queluz (Portugal), represented by J. Sena Mioludo, lawyer,

ACTION against the decision of the Second Board of Appeal of OHIM of 6 March 2012 (Case R 244/2011-2), concerning opposition proceedings between Laboratórios Delta L^daand Micrus Endovascular Corp.,

composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,

having regard to the response of OHIM lodged at the Court Registry on 30 July 2012,

having regard to the response of the intervener lodged at the Court Registry on 29 August 2012,

having regard to the rejoinder of OHIM lodged at the Court Registry on 8 April 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 8 February 2008, the applicant - Micrus Endovascular LLC, formerly Micrus Endovascular Corp. - 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 in Class 10 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 correspond, following an amendment made on 12 June 2009, to the following description: ‘Medical and surgical devices, namely, microcoils used for endovascular surgery for the treatment of aneurysms’.

4 The trade mark application was published in Community Trade Marks Bulletin No 27/2008 of 7 July 2008.

5 On 6 October 2008, the intervener - Laboratórios Delta L^da - filed a notice of opposition to registration of that trade mark. The opposition was based on the following earlier rights:

- the international registration of the figurative mark reproduced below, registered on 18 June 1947 under No 131 374, effective in Benelux, Germany, France, Italy, Hungary, Romania and Austria and covering goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and hygienic products and dietetic products for children and patients’:

- the Portuguese registration of the figurative mark reproduced below, filed on 14 March 1945 and registered on 4 February 1947 under No 140 578 for goods in Class 5 corresponding to the following description: ‘Pharmaceutical, veterinary and hygienic products and dietetic products for children and patients’:

- the company name Laboratórios Delta, filed on 24 April 1979, registered in Portugal on 6 March 1991 under No 23 113 and used in the course of trade in Portugal.

6 The opposition was based on all the goods referred to in paragraph 5 above covered by the intervener’s earlier rights, and was directed against all the goods referred to in the trade mark application.

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(4) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(4) of Regulation No 207/2009).

8 On 23 October 2009, the applicant asked the intervener to provide proof of genuine use of the earlier trade marks. On 25 January 2010, the intervener produced documents intended to prove genuine use of those trade marks.

9 On 30 November 2010, the Opposition Division upheld the opposition in its entirety on the basis of Article 8(1)(b) of Regulation No 207/2009. In that regard, for reasons of procedural economy, it based its analysis on the earlier Portuguese trade mark. It found, in essence, that the intervener had demonstrated genuine use of that trade mark - admittedly in a slightly different form, but with the same distinctive character - in respect of ‘pharmaceutical and dietetic products (for children and patients)’ in Class 5. According to the Opposition Division, since those goods and the Class 10 goods referred to in the trade mark application were ‘similar to a certain degree’ and the marks at issue were ‘identical’, there was a likelihood of confusion. In its view, the ‘identity’ of those marks stemmed from the fact that the inclusion of the word ‘portugal’ in the earlier trade marks was simply a response to a legal requirement under the Portuguese law in force at the time when the application for registration of those trade marks was filed and, accordingly, that word was not to be taken into consideration when those trade marks were compared with the mark applied for.

10 On 26 January 2011, the applicant filed a notice of appeal against the entirety of the Opposition Division’s decision.

11 By decision of 6 March 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal in its entirety.

12 The Board of Appeal found that the Opposition Division had made a fundamental procedural error in analysing whether there was a likelihood of confusion between the mark applied for and the earlier Portuguese trade mark when the only basis in respect of which OHIM had notified the parties that the opposition was admissible was the trade mark covered by the earlier international registration. For that reason, the Board of Appeal found that the Opposition Division’s decision had to be annulled, as the Opposition Division had at no time stated a view as to whether the opposition was admissible in so far as it was based on the earlier Portuguese trade mark.

13 However, having regard to the circumstances of the case and in accordance with the second sentence of Article 64(1) of Regulation No 207/2009, the Board of Appeal decided of its own motion to exercise powers falling within the competence of the Opposition Division. Accordingly, after finding that the opposition was admissible in so far as it was based on the earlier Portuguese trade mark, the Board of Appeal analysed the merits of the opposition.

14 In the first place, regarding the proof of use of the earlier Portuguese trade mark, the Board of Appeal found, as had the Opposition Division, that, although the figurative mark as used by the intervener in the relevant territory - namely, Portugal - which had the following appearance

was slightly different from the earlier Portuguese trade mark as registered, this did not alter the distinctive character of that mark.

15 More specifically, the Board of Appeal found that the word element ‘portugal’ of the earlier Portuguese trade mark, omitted from the mark as used, was a response to a legal requirement under the ‘Código da Propriedade Industrial de 1940 - Decreto-Lei No 30679, de 24 de Agosto de 1940’ (Portuguese Industrial Property Code of 1940 - Decree-Law No 30679 of 24 August 1940) which was in force at the time of filing. According to the Board of Appeal, the purpose of that word element was to indicate that the intervener was domiciled in Portugal and consequently it was a descriptive term, the sole distinctive element of the earlier Portuguese trade mark being the word ‘delta’. Regarding the other figurative and word elements in that mark, as used, the Board of Appeal held that, although they were independent elements, they remained secondary to the word ‘delta’ owing to their stylisation, size and informative meaning.

16 Next, the Board of Appeal found that the use of the earlier Portuguese trade mark covered such a wide range of ‘pharmaceutical’ products in various fields of therapy that it was impossible to describe that range as being limited exclusively to certain sub-categories of pharmaceutical product. Nor, according to the Board of Appeal, did the form in which the goods were administered call for the establishment of sub-categories. Accordingly, taking into consideration the amount of evidence and the characteristics of that evidence, it found that genuine use of that mark had been established in respect of pharmaceutical products.

17 In the second place, regarding the assessment as to whether there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal found, in essence, first, that the relevant territory for the earlier Portuguese trade mark was Portugal.

18 Secondly, the Board of Appeal observed that the Class 5 goods covered by the earlier Portuguese trade mark included products intended both for healthcare professionals - such as doctors, pharmacists and nurses - and for the general public (namely, patients). On the other hand, the Class 10 goods referred to in the trade mark application were intended for professionals in endovascular surgery only. According to the Board of Appeal, given the goods in question, the level of attention of a public composed of both professionals and end consumers would be higher than usual, owing to the fact that the goods involved have an impact on consumers’ health.

19 The Board of Appeal also pointed out that, inasmuch as the relevant public for the purposes of assessing the likelihood of confusion consisted of persons likely to use both the goods covered by the earlier Portuguese trade mark and the goods referred to in the trade mark application, it was appropriate in the present case to define that public as being a restricted and specialised public consisting of professionals for whom the latter set of goods were intended.

20 Thirdly, regarding the comparison of the goods in question, the Board of Appeal held in essence that, although they were different in nature, since the goods protected by the earlier Portuguese trade mark were pharmaceutical products and the goods referred to in the trade mark application were medical devices, they could be intended for the same public and distributed through the same distribution channel. The Board of Appeal agreed with the applicant that the specialists involved in the process of manufacturing the goods in question differed according to the category of goods concerned. However, that did not alter the fact that pharmaceutical companies could cover a number of areas within the healthcare sector. Therefore - according to the Board of Appeal - a single pharmaceutical company could consist of a number of different business divisions or units focusing on, for example, pharmaceutical products or medical devices/diagnostic appliances. Accordingly, the Board of Appeal stated that it was not beyond the bounds of possibility for goods in Class 5 and goods in Class 10 to be produced by the same company and, as a result, to have the same commercial origin.

21 According to the Board of Appeal, there were specific surgical operations with which specific pharmaceutical products were associated, given that it was necessary to administer those products before, during or after such operations. In particular, it drew attention to the fact that there were cases where a medical treatment was complementary to the surgical operation and where it could continue for a certain period after that operation or even for the rest of a patient’s life. In that regard, prescriptions of medicines would be issued by professionals who were specialised in the medical area involved in each particular case.

22 The Board of Appeal held that, since it had been established that the earlier Portuguese trade mark had genuinely been used in respect of ‘pharmaceutical products’, that term encompassed the goods described in paragraph 21 above. In addition, according to the Board of Appeal, some of the products in respect of which genuine use had been established were specifically recommended in the treatment of cardiac or vascular diseases, that is, in areas connected with the field of endovascular surgery, for which the goods referred to in the trade mark application are used.

23 The Board of Appeal concluded that the goods in question were - at least to a certain extent - similar, given that they coincided with regard to their relevant public, distribution channels and commercial origin, and that they were complementary in terms of their use.

24 Fourthly, regarding the comparison of the signs in question, the Board of Appeal stated that it was aware of the fact that the obligation which existed on 14 March 1945 (the date of filing of the earlier Portuguese trade mark) to include the word element ‘portugal’ in marks filed by trade mark applicants having their seat in Portugal had subsequently been abolished. It also stressed that it was aware of the fact that that additional element was later deleted from all the marks concerned by the Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property), formerly the Repartição da Propriedade Industrial, Direcção Geral do Comércio, Ministério da Economia, Portugal (Portuguese Industrial Property Agency, Directorate-General for Trade, Ministry of the Economy). Accordingly, the Board of Appeal concluded that the intervener’s trade mark right related only to the word ‘delta’, the element which made the marks at issue identical.

25 Lastly, taking into account the identity of the marks at issue and the fact that the goods in question were - at least to a certain extent - similar, the Board of Appeal found that, notwithstanding the fact that the relevant public had a high level of attention, there was a likelihood of confusion between those marks with regard to all those goods. Consequently, it dismissed the appeal against the Opposition Division’s decision, upheld the opposition on the ground set out in Article 8(1)(b) of Regulation No 207/2009 on the basis of the earlier Portuguese trade mark and rejected the trade mark application in its entirety. In those circumstances, it did not find it necessary either to assess whether there was a likelihood of confusion between the mark applied for and the mark registered earlier under international arrangements or to examine the ground set out in Article 8(4) of Regulation No 207/2009, on which the opposition was also based.

- order OHIM to pay the costs of the proceedings before the Board of Appeal and the General Court.

- order the applicant to pay the costs, including those incurred by the intervener.

29 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In essence, it submits that the Board of Appeal made an error in its assessment of the similarity of the goods in question, inter alia by failing to go into the level of detail required by case-law. It also submits that the Board of Appeal erred in finding that the goods in question were complementary, that they had identical distribution channels and were intended for the same public, and in attributing special importance to a single relevant factor, even to the extent of treating that factor as the only important factor when assessing the similarity of those goods.

31 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.

32 It is settled case-law that 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. According to that line of authority, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32 and the case-law cited).

33 For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should be taken, however, of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must instead rely on his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services concerned (see, to that effect, GIORGIO BEVERLY HILLS, paragraph 32 above, paragraph 33 and the case-law cited).

34 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services that they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

35 In addition, although the distinctive character of the earlier mark must indeed be taken into account when the likelihood of confusion is assessed, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, the judgment of the General Court of 14 February 2008 in Case T-189/05 Usinor v OHIM - Corus (UK) (GALVALLOY), not published in the ECR, paragraph 70 and the case-law cited, and the judgment of the General Court of 13 September 2010 in Case T-72/08 Travel Service v OHIM - Eurowings Luftverkehrs (smartWings), not published in the ECR, paragraph 63).

36 Lastly, it should be borne in mind that, in order for registration as a Community trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 obtains in part of the European Union (see, to that effect, Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 76 and the case-law cited).

37 It is in the light of the principles set out in paragraphs 31 to 36 above that the applicant’s single plea in law must be examined in the present case.

38 In the present case, the applicant disputes the Board of Appeal’s assessment of the relevant public and its level of attention (see paragraphs 18 and 19 above). According to the applicant, the Board of Appeal erred in treating the average consumer as being the same for all the goods in question and in defining the relevant market in the broadest possible terms, that is to say, as being composed of ‘healthcare professionals’. It submits that, whereas the Board of Appeal held that all products used in the healthcare sector were relevant to all persons working in that sector, it was in fact necessary to divide that very complex sector into non-homogeneous sub-categories. Although a wide range of healthcare professionals might come into contact with the intervener’s products as protected by the earlier Portuguese trade mark, that is not the case with respect to the goods referred to in the trade mark application, which, in its view, are intended only for ‘brain surgeons’, that is to say, for a sub-set of highly specialised doctors. There are distinct market segments present with distinct consumers.

39 The applicant also submits that it is not consistent to find that the relevant consumer is the ‘healthcare professional’ while at the same time maintaining, as the Board of Appeal did, that the products in question are generally purchased by a central hospital department responsible for making purchases for a range of different medical disciplines, which would instead result in the relevant public being composed of ‘administrators’. Besides describing as pure speculation the idea of a central hospital department purchasing the specialised products referred to in the trade mark application, the applicant argues that, in any event, a purchase of that kind is only ever made after specific guidance is provided by specialist medical professionals involved in the use of such products.

41 The General Court recalls in that regard that, according to settled case-law, to which the Board of Appeal also - rightly - referred in paragraph 62 of the contested decision, the relevant public is composed of persons likely to use both the goods protected by the earlier trade mark and those referred to in the trade mark application (see the judgment of the General Court of 30 September 2010 in Case T-270/09 PVS v OHIM - MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28 and the case-law cited). Furthermore, it should also be borne in mind that it follows from the case-law of the Court of Justice that an examination of the grounds for refusal must be carried out in relation to each of the goods for which trade mark registration is sought (see, to that effect, Case C-239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 34).

42 In the present case, it should be noted that the mark applied for covers specific medical and surgical devices, namely, ‘microcoils used for endovascular surgery for the treatment of aneurysms’. Accordingly, the Board of Appeal was right to define the relevant public for those goods in paragraph 61 of the contested decision as being composed of ‘professionals in endovascular surgery only’ without narrowing that category further to encompass ‘brain surgeons’ only, as the applicant argues should be done in the circumstances of the present action.

43 In that regard, it must be held that the description of the goods referred to in the trade mark application is sufficiently broad for it to be possible to regard those goods, objectively and without making reference to any of the goods actually manufactured by the applicant, as including certain goods that are suitable for use in operations carried out in areas other than brain surgery by professionals in endovascular surgery who are not necessarily brain surgeons. By way of example, that could be the position in the case of certain endovascular operations treating abdominal aortic aneurysms, to which OHIM makes reference in its response.

44 Indeed, it should be emphasised, first, that the word ‘endovascular’ refers to the inside of a blood vessel, such as the aorta, which means that its use is not confined solely to the context of brain surgery. In that regard, it can be seen from generally accessible sources that the prefix ‘endo-’ means ‘inside’ and the word ‘vascular’ means ‘relating to vessels’ or ‘belonging to vessels’.

45 Secondly, no restriction to a ‘cerebral’ context is inherent in the term ‘aneurysm’, which is more general inasmuch as, according to the Oxford English Dictionary, cited by OHIM, it refers to the ‘morbid dilatation of an artery, due to disease in the arterial coats or to a tumour caused by their rupture’ (see also, to that effect, the judgment of the General Court of 11 October 2011 in Case T-87/10 Chestnut Medical Technologies v OHIM (PIPELINE), not published in the ECR, paragraph 25).

46 Furthermore, the applicant has not provided a statement, supported by evidence, to OHIM or the General Court, explaining why the ‘microcoils’ referred to in the trade mark application would ‘only be used by surgeons in the field of brain surgery’ and why, given the current state of scientific knowledge, those microcoils could not also be used - either with or without an endovascular prosthesis - in the treatment of non-cerebral aneurysms, for example, to strengthen the aorta wall in order to prevent a damaged area from tearing. As it is, as regards that last point, it has not been established that endovascular surgery in its broadest sense is carried out only by brain surgeons and not by other types of surgeon, such as vascular or cardiac surgeons. Moreover, the written declarations from two brain surgeons based in the United States (S.M and CH.K.) submitted to OHIM and appended to the application, concerning the use of the goods in question in the context of brain surgery operations, cannot undermine the above findings, since they concern only the use of the microcoils manufactured and marketed under the DELTA or DELTAWIND brands. The same is true of the brochure on the specific technology used by ‘DELTAWIND’ submitted to OHIM and appended to the application.

47 In any event, irrespective of whether the goods referred to in the trade mark application are used by ‘professionals in endovascular surgery’ or solely by ‘brain surgeons’, it should be noted that, in either case, the public is highly specialised, particularly in the treatment of aneurysms, and is particularly well informed and attentive (see, by analogy, PIPELINE, paragraph 45 above, paragraphs 23 and 27).

48 Since it cannot be excluded that the relevant public, composed of highly specialised surgeons, may in certain circumstances use the ‘pharmaceutical products’ protected by the earlier Portuguese trade mark, especially if it is deemed necessary, following the examination of a patient before, during or after a surgical operation, to administer those medicines to that patient, it is necessary to take that public into consideration when assessing the likelihood of confusion between the marks at issue, in accordance with the case-law cited in paragraph 41 above.

49 That conclusion cannot be undermined by the applicant’s allegation that the contested decision is inconsistent inasmuch as the Board of Appeal ultimately decided that the consumers of the goods in question were the ‘administrators’ of the central hospital departments responsible for purchasing such goods. In that regard, it should be noted that, although the Board of Appeal did indeed point out in paragraph 67 of the contested decision that those goods could be purchased through such common central purchasing departments, it did not conclude from that fact that it was necessary to amend the definition of the relevant consumer, set out in paragraphs 61 and 62 of that decision, as ‘professionals in endovascular surgery’.

50 On the contrary, the Board of Appeal made reference to that public in paragraph 66 of the contested decision when referring to the purchase of the goods in question by professionals in the field of ‘endovascular surgery for the treatment of aneurysms’. Furthermore, in paragraphs 67 and 68 of that decision, it emphasised the extreme complexity of the surgery relevant to the present case. In the light of those circumstances and having regard to the factual background to the contested decision, it therefore implicitly but necessarily found that the staff of the central purchasing departments who were actually physically purchasing the goods in question were, as a general rule, only acting on the specific orders of ‘professionals in endovascular surgery’ or, at the very least, under their supervision. It is also possible to construe in that way the Board of Appeal’s statement, in paragraph 67 of the contested decision, that the purchasing of the goods in question was ‘not necessarily done by medical staff directly’. In any event, in view of the goods involved, even the professionals who work in those central purchasing departments must be regarded as acting with a particularly high level of attention.

51 According to settled case-law, in order to assess the similarity of the goods concerned, all the relevant features of the relationship between those goods 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).

52 It also follows from case-law that complementary goods are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking. By definition, goods intended for different publics cannot be complementary (see easyHotel, paragraph 34 above, paragraphs 57 and 58 and the case-law cited).

53 The applicant argues that the goods referred to in the trade mark application are highly specialised. According to the applicant, they are suitable for use in endovascular surgery for the treatment of aneurysms and will only be used by surgeons in the field of brain surgery. The applicant submits that, as was found in paragraph 35 of the judgment in Case T-385/03 Miles International v OHIM - Biker Miles (Biker Miles) [2005] ECR II-2665, which stated that clothes designed to provide protection during a hazardous activity could constitute a category of goods separate from clothing in general, in the present case, the specific category of goods referred to in the trade mark application was different from the ‘pharmaceutical products’ protected by the earlier Portuguese trade mark. Referring to the reasoning used by the General Court in Biker Miles, the applicant emphasises that the mere fact that the goods in question can be used in the same context or ‘sequentially’ is not enough to render them similar.

54 In the same vein, the applicant submits that, in accordance with paragraph 60 of the judgment in Case T-169/03 Sergio Rossi v OHIM - Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, two tests should have been carried out to ascertain whether the goods were ‘complementary’: it was necessary to assess whether there was a close connection between them in the sense that one was indispensable or important for the use of the other and, if so, it was then necessary to assess whether consumers inferred from that fact that the same undertaking was responsible for manufacturing the goods under comparison.

55 However, according to the applicant, the Board of Appeal erred in the present case by inappropriately generalising the nature of the goods referred to in the trade mark application and by defining them in paragraph 67 of the contested decision as ‘medical devices’. The applicant submits that, although the Board of Appeal correctly stated that those goods were different in nature from the goods covered by the earlier Portuguese trade mark, the high level of generalisation that marked its approach led it to conclude - wrongly - that the average consumers and distribution channels were identical and that the goods in question were complementary. In addition, the applicant characterises as a manifest error the Board of Appeal’s finding that, given the existence of a central purchasing department, the goods in question were distributed through the same distribution channel. The issue of distribution channels is relevant only to the extent that consumers infer from it that the goods in question had a common origin.

56 Similarly, the applicant submits that the fact that certain conglomerates are capable of manufacturing both pharmaceutical products and specialised medical devices is irrelevant unless it can be shown that the average consumers of the goods in question assume that it is usual for those goods to be sold by the same undertakings. According to the applicant, the Board of Appeal’s approach is tantamount to ignoring all the distinctions arising from the complex and specialised nature of healthcare and to denying the ‘considerable compartmentalism’ which is the nature of medicine and which is reflected in the number of specialisms within the field of medicine and in the distinction drawn between surgeons and doctors. By the same token, the applicant maintains that it cannot reasonably be argued that certain pharmaceutical products have the same intended purpose as microcoils solely on the ground that they are used to treat vascular diseases. Lastly, it claims that the fact that the goods in question are used in identical contexts cannot undermine the fact that the goods in question are different in nature and that they cannot be manufactured by the same specialists.

58 The General Court considers, in the first place, that the Board of Appeal was right to find in the contested decision that the goods in question - namely, various Class 5 ‘pharmaceutical products’ and Class 10 ‘medical and surgical devices, namely, microcoils used for endovascular surgery for the treatment of aneurysms’ - were different in nature, even though they may be intended for the same public (see paragraph 48 above).

59 In that regard, it should be noted that the Class 5 ‘pharmaceutical products’ are goods classed under a broad description which may include all articles normally handled by pharmacists. They may include, besides medicines, a range of products intended to improve health, such as products which enable a treatment to be administered or a diagnosis to be made, or products which can be used in the preparation or dosage of medicines. In the present case, however, it is common ground that, as the Board of Appeal stated in paragraphs 51 and 52 of the contested decision on the basis of the brochures, prospectuses and invoices produced by the intervener, the proof of genuine use of the earlier Portuguese trade mark related only to pharmaceutical products used to treat or prevent diseases directly, whether in the field of cardiology, angiology, gynaecology, rheumatology, urology, pulmonology or even (although this is not confirmed by the invoices) certain dermatological products or food supplements. The Board of Appeal also drew attention in paragraph 53 of that decision to the form in which such pharmaceutical products were administered, such as tablets, injections, gels and powders.

60 By contrast, the ‘medical and surgical devices, namely, microcoils used for endovascular surgery for the treatment of aneurysms’ in Class 10 are particularly specific products which, as the Board of Appeal stated in paragraph 68 of the contested decision, were used for vascular embolisation or occlusion and were implanted in the aneurysm using specific techniques, meaning that, in order to obtain optimum results, they had to meet certain composition and design requirements. Therefore, as the Board of Appeal rightly stated in that paragraph, and as the applicant also points out, those products could be manufactured only by undertakings with the right technology and resources, with the involvement in those manufacturing processes of specialists who were not ‘the same ... [as those] involved in the manufacturing process of the [intervener’s] pharmaceutical products’.

61 In the second place, the Board of Appeal was also right to find, in paragraphs 65 and 66 of the contested decision, that, while the goods covered by the earlier Portuguese trade mark were sold, when acquired by medical professionals, through specific distribution channels consisting mainly of pharmaceutical suppliers, the goods referred to in the trade mark application were acquired by professionals in the field of endovascular surgery through specialised distribution channels such as suppliers specialising in healthcare devices.

62 However, contrary to the applicant’s assertions, the Board of Appeal was right, in paragraph 67 of the contested decision, to refer to paragraph 40 of the judgment of the General Court of 9 September 2011 in Case T-382/09 Ergo Versicherungsgruppe v OHIM - DeguDent (ERGO), not published in the ECR: there are no particular reasons, in the absence of any evidence to the contrary submitted by the applicant, why a consideration similar to that expressed by the General Court in the case giving rise to that judgment - namely, that the purchase of ‘work tools and equipment for both dentists and dental technicians’ by ‘larger dental clinics’ could be carried out using a common central purchasing department - may not be applied in the present case. Indeed, given the complexity of the surgical operations at issue in the present case, the Board of Appeal’s premiss that those operations should, as a general rule, take place in hospitals or clinics where the purchase of both pharmaceutical products and specialised medical devices may be carried out by a common central purchasing department must a fortiori be held to be a reasonable one. Furthermore, it is common knowledge that large hospitals are often organised in such a way that orders placed by or on behalf of the various professionals working there for medicines, equipment and specialised work tools are centralised, sometimes for a number of units within a single hospital.

63 However, it cannot be inferred from this that such a situation would amount to the distribution channels being identical for the various goods in question; nor, as has already been stated in paragraphs 49 and 50 above, can it be inferred that administrators working in those central purchasing departments would, as a general rule, constitute the relevant public in respect of whom the likelihood of confusion would have to be assessed in the present case.

64 It has already been stated that, as a general rule, it is professionals in endovascular surgery who ultimately decide - either directly or through the central purchasing department - which specific products must be ordered for the hospital or the clinic or, at the very least, it is those professionals who are responsible for the choices made in that regard.

65 Thus, although it is probable that, in larger hospitals and clinics, stock management of the goods in question comes within the remit of administrators in common central purchasing departments, the fact remains that any changes to the types of specialised products ordered remain conditional upon the necessary consent being obtained from surgeons using those products in their surgical operations. Accordingly, those medical professionals play an active part in planning any changes to a hospital or clinic’s purchasing policy with regard to those products. Moreover, that is the construction which must be placed on OHIM’s contention before the General Court that ‘the specific medical professionals do guide [the acquisition of the goods in question], in so far as they send their suggestions or requests to the procurement department’.

66 In those circumstances, it must be acknowledged that, as the applicant maintains, the fact that it is possible to centralise purchases in hospitals or clinics is not a particularly important factor in assessing the similarity of the goods in question, since that fact is not capable of undermining the Board of Appeal’s finding in paragraphs 65 and 66 of the contested decision that, when acquired by medical professionals, the distribution channels used for the goods applied for are different from those used for the Class 5 goods covered by the earlier mark.

67 In the third place, regarding the question whether or not the goods in question are complementary, it should be borne in mind that, according to settled case-law, goods may be regarded as complementary in terms of their function (judgment of the General Court of 11 July 2007 in Case T-263/03 Mülhens v OHIM - Conceria Toska (TOSKA), not published in the ECR, paragraph 31, and PiraÑAM diseño original Juan Bolaños, paragraph 51 above, paragraph 49); or their complementarity may stem from their belonging, from the point of view of the relevant public, to a single product family which allows them easily to be regarded as components of a general range of products capable of having a common commercial origin (Case T-85/02 Díaz v OHIM - Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraphs 33 and 36).

68 It appears that, from both points of view, such is indeed the case for the goods in question on account of their common intended purpose in the context of their use in the performance of endovascular surgical operations to treat aneurysms or, as regards the goods protected by the earlier Portuguese trade mark, in the context of pre-operative or post-operative care, or even in the context of preventive medicine designed to prevent such aneurysms (see, by analogy, the judgment of the General Court of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM - Terumo (CAPIO), not published in the ECR, paragraphs 78 to 85). That is so also because they are co-manufactured by certain undertakings, namely, certain pharmaceutical conglomerates which are able to cover a number of areas within the healthcare sector, as the Board of Appeal correctly pointed out in paragraph 68 of the contested decision. The applicant has not provided any specific evidence which could form the basis of a ruling that the Board of Appeal erred in that regard. In the light of the foregoing, it must be found that there is a certain connection between the goods under comparison.

69 In that regard, the differences observed by the applicant in the nature of the goods in question and the ways in which they are used are irrelevant, as are the applicant’s references to the ‘considerable compartmentalism’ of medicine and the complexity of healthcare, since those goods can still be regarded, even by a highly specialised relevant public, as falling within a particularly broad range of products designed to treat, in various ways, medical problems in a specific field, namely, the field of aneurysms.

70 Regarding the applicant’s reference to the judgment in Biker Miles and, in particular, to paragraph 35 of that judgment - cited in paragraph 53 above - it must be found that, even if certain products, owing to the differences between their specific functions, are held to constitute separate ‘categories’, the fact remains that there is still a certain degree of similarity between them.

71 In the light of all of the foregoing, it must be held that, notwithstanding the different nature of the goods in question and the fact that there are differences between their distribution channels, the Board of Appeal did not err in finding that, by reason of their similar commercial origins and complementary nature, the goods at issue were - at least to a certain extent - similar for the purposes of Article 8(1)(b) of Regulation No 207/2009.

72 It is settled case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of the General Court of 26 January 2006 in Case T-317/03 Volkswagen v OHIM - Nacional Motor (Variant), not published in the ECR, paragraph 46).

73 Furthermore, according to settled case-law, there is nothing to prevent a determination as to whether there are similarities between a word mark and a figurative mark, since both types of mark have a graphic form capable of creating a visual impression (see the judgment of the General Court of 23 April 2013 in Case T-109/11 Apollo Tyres v OHIM - Endurance Technologies (ENDURACE), not published in the ECR, paragraph 60 and the case-law cited).

74 In the present case, it can be seen from, inter alia, paragraphs 73 to 76 of the contested decision, read in conjunction with the second indent of the third paragraph of that decision, that the Board of Appeal took the view that, although the earlier Portuguese trade mark cited in opposition contained two elements, namely the words ‘delta’ and ‘portugal’, the intervener’s trade mark right related solely to the word ‘delta’ and not to the combination of those two words. The Board of Appeal based its reasoning in that regard on an analysis of the Portuguese legislation in force at the time when the application for the earlier Portuguese trade mark was filed, and on its analysis of the subsequent changes to that legislation and their implications for the earlier Portuguese trade mark (see paragraph 24 above).

75 Next, after referring in paragraph 75 of the contested decision to paragraph 54 of the judgment in Case C-291/00 LTJ Diffusion [2003] ECR I-2799, concerning the interpretation of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989, L 40, p. 1), particularly regarding the issue of identity between a sign and an earlier registered trade mark, the Board of Appeal stated in paragraph 76 of that decision that, ‘[t]aking into account the earlier [Portuguese] trade mark as it [was] registered [at the time when the contested decision was adopted] instead of as it was initially registered, the conflicting marks [were] identical’.

76 That assessment by the Board of Appeal has not been challenged before the General Court. In any event, even assuming that the Board of Appeal did err in its assessment of the impact that the Portuguese legislation or the changes made to that legislation might have had on the earlier Portuguese trade mark and, more specifically, even supposing that it was wrong to dismiss the word ‘portugal’ in that trade mark as completely irrelevant, a mistake of that kind would not have had a major impact on the assessment of the similarity of the signs in question and, consequently, would not have called in question the conclusion regarding the likelihood of confusion.

77 Indeed, it must be found that, even if it was wrong to dismiss the word ‘portugal’ as completely irrelevant, the signs in question would have had to be found to be particularly similar overall, since the high degree of similarity between them stemmed from the fact that the word ‘delta’, which is the sole element of the mark applied for, also constitutes the most easily perceived element of the earlier Portuguese trade mark, because of its size, its prominent role owing to its position above the second word in that trade mark and, lastly, because of its easily legible font. Accordingly, it must be held that the word ‘delta’, which has not been asserted to have any specific meaning in connection with the goods covered by the marks at issue, is of average distinctiveness and, as such, will be remembered by the relevant public, unlike the word ‘portugal’, which is of only weak distinctiveness (since, in the eyes of the relevant consumers, it simply refers to the territory in which that mark is protected) and which is only represented using letters of a much smaller font than that used for the letters of the word ‘delta’ which precedes it.

78 It should also be added that there is nothing in the graphics of the earlier Portuguese trade mark, viewed as a whole, that can be regarded as being of such significance as to give rise to remarkable differences between that mark and the mark applied for. This is particularly so if account is taken of the fact that the font used for the words ‘delta’ and ‘portugal’ is no different from those which are normally used and accordingly cannot, as such, attract the attention of members of the relevant public and become lodged in their memory.

79 In paragraphs 77 to 81 of the contested decision, the Board of Appeal concluded that, taking into account the fact that the goods in question had been found to be similar, at least to a certain extent, and that the signs in question had been found to be identical, not even the relevant public’s high level of attention was sufficient to exclude the possibility that that public might believe that those goods came from the same undertaking or, as the case may be, from economically linked undertakings. Accordingly, the Board of Appeal found that there was a likelihood of confusion between the marks at issue.

81 The General Court finds, following its conclusions in paragraphs 76 to 78 above, that, in the two situations mentioned above, namely, situations where the signs in question are identical or simply highly similar, it must be held, in view of the rule set out in GIORGIO BEVERLY HILLS, cited in paragraph 32 above, that the different factors to be taken into account are interdependent, that the Board of Appeal did not err in concluding that the possibility of a likelihood of confusion between the marks at issue could not be excluded, notwithstanding the high level of attention of the particularly specialised relevant public concerned.

82 It follows that the single plea in law put forward by the applicant must be rejected and the action must accordingly be dismissed in its entirety.

83 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.

84 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Micrus Endovascular v OHMI - Laboratorios Delta (DELTA) (Judgment) [2014] EUECJ T-218/12 (10 September 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T21812.html Cite as: EU:T:2014:760, [2014] EUECJ T-218/12, ECLI:EU:T:2014:760

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