JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

11 July 2013 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative trade mark CULTRA – Earlier national word marks SCULPTRA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑142/12,

Aventis Pharmaceuticals, Inc., established in Bridgewater (United States), represented by R. Gilbey, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Fasel Srl, established in Bologna (Italy),

ACTION brought against the decision of the First Board of Appeal of OHIM of 26 January 2012 (Case R 2478/2010-1) relating to opposition proceedings between Aventis Pharmaceuticals, Inc. and Fasel Srl,

THE GENERAL COURT (Sixth Chamber),

composed of H. Kanninen, President, G. Berardis (Rapporteur) and C. Wetter, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 30 March 2012,

having regard to the response lodged at the Registry of the General Court on 11 July 2012,

having regard to the reply, accompanied by new evidence offered in support, lodged at the Registry of the General Court on 19 October 2012,

having regard to the rejoinder, lodged at the Registry of the General Court on 9 January 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, and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 19 January 2009, Fasel Srl filed an application for registration of a Community trade mark with 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)).

2        The trade mark in respect of which registration was sought is the figurative sign reproduced below:

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 to the following description: ‘Skin rejuvenation equipment for beauty, cosmetic and medical purposes; ultrasonic cavitation equipment for beauty, cosmetic and medical purposes; pulsed light equipment for beauty, cosmetic and medical purposes; radio-frequency equipment for beauty, cosmetic and medical purposes; mechanised massage equipment for beauty, cosmetic and medical purposes; surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials’.

4        The application for a Community trade mark was published in Community Trade Marks Bulletin No 17/2009 of 11 May 2009.

5        On 11 August 2009, the applicant, Aventis Pharmaceutical, Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier rights:

–        Czech word mark SCULPTRA registered under No 301 724 on 17 June 2008, designating goods and services falling within Classes 5, 10 and 44, corresponding to the following description: ‘Pharmaceutical preparations for use in reconstructive or cosmetic work, implants for use in therapeutic, cosmetic and aesthetic surgery in this category; surgical implants composed of artificial materials for use in therapeutic, cosmetic and aesthetic surgery; cosmetic, plastic and reconstructive surgery, medical therapeutic care, particularly after a surgical treatment of fine lines and wrinkles’;

–        German word mark SCULPTRA registered under No 30 406 574 on 6 February 2004, designating goods and services falling within Classes 5, 10 and 44, corresponding to the following description: ‘Pharmaceutical products for application in restorative treatment and beauty care; implants and prosthetics for therapeutic, cosmetic and aesthetic surgery; surgical implants comprising artificial material for therapeutic, cosmetic and aesthetic surgery ; cosmetic, plastic and reconstructive surgery, medical care; medical beauty care, namely non-surgical treatment of fine lines and wrinkles’;

–        Finnish word mark SCULPTRA registered under No 233 638 on 6 February 2004, designating goods and services falling within Classes 5, 10 and 44, corresponding to the following description: ‘Pharmaceutical preparation[s] for use in restorative care and beauty care, implant[s] for use in therapeutic, cosmetic and aesthetic surgery; surgical implant[s] consisting of synthetic material[s] for therapeutic, cosmetic and aesthetic surgery; cosmetic, plastic and restorative surgery; medical beauty care, namely non-surgical treatment of fine lines and wrinkles’;

–        United Kingdom word mark SCULPTRA registered under No 2 355 273 on 6 February 2004, designating goods and services falling within Classes 5, 10 and 44, corresponding to the following description: ‘Pharmaceutical preparations for use with restorative and beauty care, implants for use in therapeutic, cosmetic and aesthetic surgery; surgical implants comprised of artificial materials for therapeutic, cosmetic and aesthetic surgery; cosmetic, plastic and restorative surgery; medical beauty care, namely non-surgical treatment of fine lines and wrinkles’;

–        Hungarian word mark SCULPTRA registered under No 183 214, on 6 February 2004, designating goods and services falling within Classes 5, 10 and 44, corresponding to the following description: ‘Pharmaceutical products for use at health rehabilitation and beauty centres, implants for therapeutic use in cosmetic and aesthetic surgery; plastic surgical implants for therapeutic use in cosmetic and aesthetic surgery; surgery or use of cosmetic, plastic and health rehabilitation surgery, medical beauty treatment services, in particular non-surgical treatment of furrows and wrinkles’.

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.

8        On 9 December 2010 the Opposition Division rejected the opposition in its entirety. In particular, that division found that the earlier trade marks and the trade mark applied for, which had to be considered as consisting of the word ‘cultra’ with the letter ‘c’ in stylised script, presented only a certain degree of similarity which was not sufficient to find that there was a likelihood of confusion as a result of the high level of attention of the target public, even for identical goods.

9        On 16 December 2010 the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By decision of 26 January 2012 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that:

–        the level of attention of the public was relatively high;

–        the goods or services covered by the trade marks at issue were similar or identical;

–        the visual similarity between the signs at issue was very low, inter alia on the ground that the beginning of the trade mark applied for, which started with a rounded figurative element which could be perceived as a capital ‘c’, differed from the beginning of the earlier trade marks ;

–        the phonetic similarity between those signs was low, since the word element of the trade mark applied for, which was simply the word ‘ultra’, and the earlier trade marks coincided only in their last respective syllable, whereas the presence of the ‘s’ and ‘p’ consonants in the earlier trade marks alone created considerable differences;

–        the signs at issue were not conceptually similar, since the earlier trade marks referred to sculpture, whereas the trade mark applied for was merely a laudative formula or could at most, for the public who perceive a ‘c’ at its beginning, refer to culture;

–        there was no likelihood of confusion, despite the similar or identical nature of the goods and services referred to, on the grounds that the signs were similar to a low degree, that the earlier trade marks had an inherently distinctive character and that the relevant public’s degree of attention was relatively high.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        give an opinion on the conclusions that would have been drawn as regards likelihood of confusion, had the ‘correct facts’ been applied with regard to the signs;

–        order OHIM to pay the costs of legal proceedings, including those which the applicant was ordered to pay as part of the administrative proceedings.

12      OHIM contends that the Court should:

–        declare the second head of claim inadmissible;

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

1.     Admissibility of the applicant’s second head of claim

13      By its second head of claim, the applicant asks the Court to give an opinion on the conclusions that would have been drawn as regards likelihood of confusion, had the ‘correct facts’ been applied with regard to the signs.

14      OHIM contends that that claim is inadmissible.

15      It must be observed that the General Court has no jurisdiction, in the context of an application based on Article 263 TFEU and on Article 65 of Regulation No 207/2009, to make a declaratory judgment (see, to that effect, judgment of 16 November 2011 in Case T‑500/10 Dorma v OHIM – Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), not published in the ECR, paragraph 17, and judgment of 22 May 2012 in Case T‑273/10 Olive Line International v OHIM – Umbria Olii International (O·LIVE), not published in the ECR, paragraph 19; see, to that effect and by analogy, the order in Case C‑224/03 Italy v Commission [2003] ECR I‑14751, paragraphs 20 and 21).

16      The applicant’s second head of claim must therefore be dismissed as inadmissible.

2.     Substance

17      In support of its action, the applicant relies, in essence, on two pleas in law:

–        the first, alleging infringement of Article 76 of Regulation No 207/2009, of Rule 50 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), and of the right to be heard;

–        the second, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in that the Board of Appeal, in relying on the purportedly low degree of similarity of the signs at issue, incorrectly ruled out the existence of a likelihood of confusion, even though the goods and services at issue are similar or identical.

 Preliminary observations

18      The Board of Appeal held, at paragraph 22 of the contested decision, that the trade mark applied for consisted of the word ‘ultra’, with a figurative element which could be perceived as the letter ‘c’. Furthermore, when considering the comparison of the signs, it took account, from a visual and conceptual perspective, both of that part of the relevant public which would read the letter, and of that part which would not. By contrast, from a phonetic perspective, it did not refer to that letter with regard to the trade mark applied for.

19      It is appropriate to examine the second plea first, in order to ascertain whether the Board of Appeal’s finding, that no likelihood of confusion exists between the trade marks at issue, may be confirmed in relation to that part of the relevant public which recognises the letter ‘c’ in the figurative element of the trade mark applied for.

20      In that regard, it must be observed that OHIM concedes that at least part of that public will recognise the letter ‘c’ in the figurative element.

 The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

21      As set out in Article 8(1)(b) of Regulation No 207/2009, 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 an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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. Pursuant to Article 8(2)(a)(ii) of Regulation No 207/2009, trade marks registered in a Member State, with a date of application for registration which is earlier than that of the application for the Community trade mark, are to be considered as being earlier trade marks.

22      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 that 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 concerned and account being taken of all factors relevant to the circumstances of the case, including 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 33 and the case-law cited).

 The relevant public

23      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. 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 in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

24      In the present case, the Board of Appeal held, at paragraph 11 of the contested decision, that in light of the geographical scope of the earlier trade marks, the relevant public was situated in the Czech Republic, in Germany, in Finland, in the United Kingdom and in Hungary, and at paragraph 33 of that decision, that the degree of attention of that public was relatively high, as the goods and services covered by the trade marks at issue were health related to a high degree.

25      In that regard, first, the findings of the Board of Appeal, relating to the Member States in which the relevant public is situated, should be confirmed.

26      Secondly, it is noteworthy that the goods and services covered by the trade marks at issue are directed, on the one hand, at professionals working in the medical and paramedical fields and, on the other hand, to the end consumers of those goods or services.

27      According to the case-law, both professionals and end consumers of health related goods and services display a high degree of attention (see, to that effect, judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 29; judgment of 8 July 2009 in Case T‑240/08 Procter & Gamble v OHIM – Laboratorios Alcala Farma (oli), not published in the ECR, paragraph 50; and judgment of 15 December 2009 in Case T‑412/08 Trubion Pharmaceuticals v OHIM – Merck (TRUBION), not published in the ECR, paragraph 28). In relation to end consumers of goods and services which have cosmetic purposes, or which have a cosmetic function, their degree of attention should be regarded as relatively high at the very least (see, to that effect, judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraphs 25 and 65; judgment of 18 October 2011 in Case T‑304/10 dm-drogerie markt v OHIM – Semtee (caldea), not published in the ECR, paragraph 58; and judgment of 28 November 2012 in Case T‑29/12 Bauer v OHIM – BenQ Materials (Daxon), not published in the ECR, paragraph 36).

28      Therefore, it must be concluded that the degree of attention of the public is at least as high as the Board of Appeal found it to be, which the applicant does not dispute.

 The comparison of the goods and services

29      The Board of Appeal, at paragraph 17 of the contested decision, confirmed the finding of the Opposition Division that the goods covered by the trade mark applied for were identical or similar to those covered by the earlier trade marks. In greater detail, it is apparent from the decision of that division that identity exists only for the goods ‘surgical, medical, dental and veterinary apparatus and instruments’, which are covered by the trade mark applied for, and for the goods ‘surgical implants composed of artificial materials for use in therapeutic, cosmetic and aesthetic surgery’, which are protected by the earlier trade marks, while the other goods and services are merely similar.

30      The assessment of the Opposition Division, which the Board of Appeal endorsed and which the applicant does not dispute, should be confirmed.

 The comparison of the signs

31      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 appreciation of such a 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 the case-law cited).

–       Visual comparison

32      The Board of Appeal held, at paragraph 23 of the contested decision, that the earlier SCULPTRA trade marks were visually similar only to a low degree to the trade mark applied for, whether that trade mark is perceived as including the word ‘ultra’ or the word ‘cultra’. According to the Board of Appeal, it was appropriate to take account of the differences concerning the beginnings of the signs at issue, of the eye-catching size of the figurative element of the trade mark applied for and of the letters ‘s’ and ‘p’ which are present only in the earlier trade marks.

33      The applicant submits that the Board of Appeal attached excessive importance to that figurative element and those letters, instead of carrying out a global comparison.

34      It must be noted that, according to established case-law, the public generally pays greater attention to the beginning of a mark than to the end (see Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 30 and the case-law cited).

35      That is all the more so in the present case with respect to the trade mark applied for, as that trade mark begins with a figurative element which, without being dominant, nonetheless attracts attention. In particular, for that part of the public which recognises in that element a large letter ‘c’, the difference from the earlier trade marks, which begin with the letter ‘s’, will therefore be obvious.

36      In the same way, the letter ‘p’, which appears only in the earlier trade marks, is another differentiating factor which will not escape the attention of the relevant public.

37      If the existence, in all the signs at issue, of the sequence of letters ‘c’, ‘u’, ‘l’ and ‘t’, ‘r’, ‘a’ constitutes an indication of similarity, the differences referred to at paragraphs 35 and 36 above make it possible to confirm the Board of Appeal’s finding that there is only a very low degree of visual similarity in the present case.

38      That conclusion is not called into question by the judgment in PRAZOL, relied upon by the applicant. In the case giving rise to that judgment, two pure word marks were at issue, namely, the words ‘prazol’ and ‘prezal’, which began with the same two consonants, were composed of the same number of letters and could only be distinguished on the basis of one of those.

–       Phonetic comparison

39      At paragraph 24 of the contested decision, the Board of Appeal held that the signs at issue were phonetically similar to a low degree.

40      The applicant asserts, first, that the Board of Appeal failed to take account, if only as an alternative plea, of the fact that the figurative element of the trade mark applied for was a representation of the letter ‘c’ and, secondly, that whilst it is obvious that two letters in a word do not go by unnoticed, that finding is not decisive in the present case, inasmuch as it does not justify the conclusion reached by the Board of Appeal. The applicant claims that, in contrast, it is important to ascertain whether the presence of the letters ‘s’ and ‘p’ in the earlier trade marks alone takes precedence over the fact that all the trade marks at issue include both sequences of letters ‘c’, ‘u’, ‘l’ and ‘t’, ‘r’, ‘a’.

41      In that regard, it is apparent from the first three sentences of paragraph 24 of the contested decision that the Board of Appeal carried out a phonetic comparison between the earlier trade marks SCULPTRA and the trade mark applied for by interpreting the latter as being made up of the syllables ‘ul’ and ‘tra’. In relation to the syllable ‘ul’, the Board of Appeal found that the trade mark applied for has a beginning and ending different from that of the earlier trade marks, which began with the syllable ‘sculp’. Subsequently, the Board of Appeal highlighted the fact that the letters ‘s’ and ‘p’, which appeared only in the earlier trade marks, would not pass the ears of the relevant public unnoticed, and that therefore the first syllables of those trade marks created a considerably different aural impression from that of the first syllable of the trade mark applied for.

42      It must be observed that, in contrast to the method followed in relation to the visual and conceptual similarities, the Board of Appeal omitted to compare the signs at issue phonetically from the perspective of that part of the relevant public which would pronounce the figurative element of the trade mark applied for as a letter ‘c’. That omission is a mistake which affects the Board’s finding as to the existence of only a low degree of phonetic similarity in the present case, since the existence of that letter in the trade mark applied for is an element which brings it closer to the earlier trade marks.

43      Furthermore, even if it could be considered that the Board of Appeal, in merely referring, in the second part of paragraph 24 , to the letters ‘s’ and ‘p’ and not also to the letter ‘c’ as elements differentiating the first syllables of the signs at issue, implicitly took account of the possibility that the relevant public might pronounce the trade mark applied for as being the word ‘cultra’, its finding as to the fact that the first syllables of the trade marks at issue differ considerably is nonetheless incorrect.

44      It must be observed that, in contrast to what OHIM asserts, the pronunciation of the beginnings of the words ‘cultra’ and ‘sculptra’ by the relevant Hungarian and Czech public is liable to give rise to similar sounds. In addition, whilst it is true that the letter ‘p’, which appears only in the earlier trade marks, will not escape the attention inter alia of that relevant public, it must be borne in mind that the public generally pays greater attention to the beginning of a trade mark.

45      Since the first syllables of the signs at issue begin with two sounds which are similar for a part of the relevant public and since the second syllables coincide, it must be concluded that, in contrast to what the Board of Appeal asserts, those signs are phonetically similar for that part of that public.

–       Conceptual comparison

46      At paragraph 25 of the contested decision, the Board of Appeal held that the signs at issue were conceptually different, since the earlier trade marks vaguely referred to the concept of sculpture, whilst the trade mark applied for referred to the concept of culture for the public which recognises the letter ‘c’ in the figurative element thereof.

47      The applicant asserts that the concepts of culture and sculpture both relate to aesthetics and beauty products, as is apparent from the submissions made and evidence presented to the Board of Appeal.

48      In that regard, it should be observed that the existence of some degree of conceptual similarity between the signs at issue cannot be excluded in relation to that part of the relevant public which associates the words ‘cultra’ and ‘sculptra’ respectively with the concepts of culture and sculpture, since those two concepts may be linked to each other. However, the Board of Appeal did no more than find that those words are conceptually different, without providing any explanation in support of its statement, even though it conceded that they may refer to those concepts.

49      Therefore, the Board of Appeal’s finding to the effect that the signs at issue are conceptually different cannot be upheld.

50      In those circumstances, it is not necessary to rule on the question whether the Board of Appeal incorrectly omitted to rule on the evidence which the applicant had submitted to it for the purposes of the assessment of the conceptual similarity.

–       Conclusions on the comparison of the signs

51      The Board of Appeal found, in paragraph 26 of the contested decision, that the signs at issue were globally similar to a low degree.

52      That finding cannot be upheld, since it was founded on the incorrect premisses (see paragraphs 42 to 45, 48 and 49 above) that the signs at issue were phonetically similar only to a low degree and that they were conceptually different.

 Likelihood of confusion

53      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I-5507, paragraph 17, and 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 74).

54      In the present case, the Board of Appeal excluded the existence of a likelihood of confusion, despite the identity or similarity of the goods or services at issue.

55      The applicant submits that there is a likelihood of confusion, given the purported degree of similarity, which is at the very least average, between the signs at issue.

56      It should be noted that, since the goods and services covered by the trade marks at issue are similar or identical, the exclusion of the existence of a likelihood of confusion between those marks, established in the contested decision, necessarily flows from the inadequate assessment which led the Board of Appeal to its incorrect findings as regards the assessment of the phonetic and conceptual similarity of those trade marks.

57      In those circumstances, the contested decision must be annulled without there being any need to consider the first plea, and the action dismissed as to the remainder, in accordance with what has been stated in paragraphs 15 and 16 above.

 Costs

58      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful for the most part, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

59      The applicant also applied for OHIM to be ordered to pay the costs incurred by it in the administrative proceedings before OHIM. In that connection, it should be recalled that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division. Accordingly, the applicant’s request that OHIM, having been unsuccessful, be ordered to pay the costs of the administrative proceedings can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 January 2012 (Case R 2478/2010-1);

2.      Dismisses the action as to the remainder;

3.      Orders OHIM to pay its own costs and those of Aventis Pharmaceuticals, Inc., for the purposes of the proceedings before the General Court and before the Board of Appeal.

Kanninen

Berardis

Wetter

Delivered in open court in Luxembourg on 11 July 2013.

[Signatures]