JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)

11 November 2009 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark CITRACAL – Earlier national word mark CICATRAL – Relative ground for refusal – Likelihood of confusion – Similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

In Case T‑277/08,

Bayer Healthcare LLC, established in Morristown, New Jersey (United States), represented by M. Edenborough, Barrister,

applicant,

v

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

defendant,

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

Uriach-Aquilea OTC, SL, established in Palau-Solita i Plegamans (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 May 2008 (Case R 459/2007-4) relating to opposition proceedings between Uriach-Aquilea OTC, SL and Bayer Healthcare LLC,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of M. Jaeger, President, F. Dehousse (Rapporteur) and I. Wiszniewska-Białecka, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court of First Instance on 15 July 2008,

having regard to the response lodged at the Court Registry on 4 November 2008,

having regard to the decision of the President of the Court of First Instance of 13 May 2009 to sit in the present case since one of the Members of the Chamber was prevented from attending,

having regard to the absence of an application for a hearing to be arranged 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 Court of First Instance, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 6 July 2000, Mission Pharmacal Co., the predecessor-in-title of Bayer Healthcare LLC (‘the applicant’), filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under 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 mark for which registration was sought is the word sign CITRACAL.

3        The goods in respect of which registration was sought are in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Dietary supplements, including dietary supplements inclusive of calcium salt’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 28/2001 of 26 March 2001.

5        On 26 June 2001, Laboratorios Diviser-Aquilea, SL, which became Laboratorios Ern, SA, the predecessor-in-title of Uriach-Aquilea OTC, SL (‘the opponent’), filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the mark applied for with regard to all the goods covered by the application for registration. The grounds relied on in support of that 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). The opposition was based on the earlier national word mark CICATRAL, which is the subject of Spanish registration No 223532, applied for on 5 March 1949, granted on 30 July 1949 and last renewed on 22 May 2001, covering goods in Classes 1 and 5 of the Nice Agreement and corresponding, for each of those classes, to the following description:

–        Class 1: ‘Chemical products and specialities’;

–        Class 5: ‘Pharmaceutical products and specialities of all types’.

6        By letter of 2 October 2003, the applicant requested that the opponent furnish proof, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier mark had been put to genuine use in the Member State in which that mark is protected. By letter of 31 October 2003, the Opposition Division requested the opponent to furnish that proof by 1 January 2004.

7        The opponent submitted its observations on 30 December 2003 and sent documents to the Opposition Division, which were received by the latter on 7 January 2004. Amongst those documents were a copy of the packaging of the product at issue, in Spanish, and its instruction leaflet, in Spanish and English.

8        It is apparent from the file relating to the proceedings before OHIM that correspondence was exchanged in 2004 between the Opposition Division, the applicant and the opponent concerning whether or not those documents were filed out of time. On 8 October 2004, the opponent filed an application for restitutio in integrum with OHIM, pursuant to Article 78 of Regulation No 40/94 (now Article 81 of Regulation No 207/2009). On 28 October 2004, the opposition proceedings were suspended pending a decision on that application.

9        By decision of 17 March 2006, OHIM granted restitutio in integrum.

10      On 17 May, 4 June, 14 June and 25 September 2006, the applicant submitted its observations to OHIM concerning proof of use of the earlier mark. On 28 November 2006, the opponent submitted its observations to OHIM.

11      By decision of 30 January 2007, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. It held that use of the earlier mark was demonstrated for some of the goods covered by its Spanish registration, namely for ‘healing pomades (cicatrisant)’. It found that there was a likelihood of confusion for the public in Spain, in view of the fact that the marks were visually and phonetically similar and that, to a certain extent, the goods were similar.

12      On 27 March 2007, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision.

13      By decision of 5 May 2008 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal.

14      First, the Board of Appeal held that evidence of genuine use of the earlier mark had been provided in relation to ‘healing salve[s]’ and that, for the purposes of examining the opposition, the Spanish mark had to be considered as if it were registered in respect only of those goods (paragraph 17 of the contested decision).

15      Second, it held that there was an extremely high degree of visual and phonetic similarity between the marks. Conceptually, it noted that neither the earlier mark nor the mark applied for had any meaning in Spanish and that there was therefore no conceptual difference that could counteract those strong visual and phonetic similarities (paragraphs 19 and 20 of the contested decision).

16      Third, the Board of Appeal confirmed the similarity of the goods at issue. It accepted that there was a certain difference between them since a ‘healing salve’ is to be applied to wounds, sores, and so on, whereas ‘dietary supplements, including dietary supplements inclusive of calcium salt’, are intended to be ingested as supplements to daily nutrition. It noted, however, that at issue were pharmaceutical products used for the purpose of restoring the human body to health, which can be purchased via the same specialised channels, namely pharmacies, and are likely to be produced by the same manufacturers. It added that they could be complementary to each other, for example in some cancer therapies. The goods had therefore to be considered similar (paragraph 23 of the contested decision).

17      The Board of Appeal therefore concluded that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the two marks at issue, in Spain.

18      Consequently, the Board of Appeal upheld the decision of the Opposition Division and dismissed the appeal.

 Forms of order sought by the parties

19      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and/or the opponent to pay the costs.

20      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

21      In support of its action, the applicant raises two pleas in law. The first alleges, in essence, infringement of Article 43(2) and (3) of Regulation No 40/94 and of Rule 22(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, and is based on the Board of Appeal’s allegedly incorrect assessment of the evidence of genuine use of the earlier mark, on the ground that the translation of the description of the goods covered by that mark is not adequate. The second plea alleges infringement of Article 8(1)(b) of Regulation No 40/94.

 The first plea, alleging, in essence, infringement of Article 43(2) and (3) of Regulation No 40/94 and of Rule 22(6) of Regulation No 2868/95

 Arguments of the parties

22      The applicant claims that the opponent has not provided an adequate translation of the description of the goods covered by the earlier mark. It points out that the instruction leaflet in Spanish describes the goods as ‘pomada cicatrizante’ or ‘pomada’, whereas the instruction leaflet in English renders this as ‘healing pomade’, when ‘pomade’ means ‘a perfumed ointment for the hair, originally made from apples’. The applicant asserts that the Board of Appeal failed to examine that question of translation and wrongly summarised the Opposition Division’s decision as establishing use in relation to ‘healing salve[s]’. It concludes that the translation provided is not adequate and that genuine use of the earlier mark has therefore not been demonstrated, which would justify the dismissal of the opposition. It adds that, if the translation of the Spanish word ‘pomada’ is ‘pomade’ in English, which should then be understood as meaning ‘a perfumed ointment for the hair, originally made from apples’, that implies either that genuine use of the earlier mark has not been demonstrated in relation to goods in Class 5, or that it has been demonstrated in relation only to ‘perfumed ointments for the hair, originally made from apples’, and the comparison must then be made between those goods and the goods in respect of which registration is sought.

23      OHIM disputes the applicant’s argument. It contends, in essence, that, in view of the contents of the file, the goods for which the earlier mark has been used are ‘healing salves’ and the comparison of the goods was thus correctly conducted.

 Findings of the Court

24      Rule 22(6) of Regulation No 2868/95 is worded as follows:

‘Where the evidence supplied by the opposing party is not in the language of the opposition proceedings, [OHIM] may require the opposing party to submit a translation of that evidence in that language, within a period specified by [OHIM].’

25      It should be noted that the legal requirements concerning, in particular, the evidence, the supporting documents and their translation into the language of the opposition proceedings are not conditions of admissibility of the opposition, but substantive conditions of the opposition (see, to that effect, Case T-232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II-2749, paragraph 52, and Case T-407/05 SAEME v OHIM – Racke (REVIAN’s) [2007] ECR II-4385, paragraph 43).

26      In the present case, the Court finds, first of all, that the translation into the language of the opposition proceedings, namely English, of the description of the product covered by the mark CICATRAL was provided by the opponent. By its letter of 30 December 2003, the opponent sent to OHIM the documents intended to prove genuine use of the mark CICATRAL, including, in particular, the instruction leaflet of the product at issue in Spanish and English (see paragraph 8 above). The translation of the description of the product into English (‘healing pomade’) was thus provided by the opponent by means of that instruction leaflet, which the applicant does not dispute as such.

27      Concerning, next, the applicant’s complaint that the translation in the instruction leaflet in English is inadequate, it should be noted that the expression ‘healing pomade’, used in the leaflet in English, and the expression ‘healing salve’, used in the contested decision, are not identical.

28      However, in the present case, the contents of the leaflet in English make it possible to identify the goods covered by the earlier mark clearly and to find that there was no doubt about the properties of the goods at issue. According to the information and directions for use in the leaflet, the mark CICATRAL relates to a pomade, which can be supplied without prescription, intended for the treatment, in particular, of ‘injuries and burns, infected or not’. The directions for use state that, in general, two or three applications daily suffice and that it is necessary to clean the lesion before applying the CICATRAL pomade. In the case of burns, the lesion can be cleaned with the same pomade. It is, therefore, clearly apparent from that leaflet that the goods covered by the earlier mark are not ‘perfumed ointments for the hair, originally made from apples’, as the applicant claims.

29      Therefore, the translation ‘healing salve’ used in the contested decision does not seem to be incorrect. In paragraph 23 of the contested decision, the Board of Appeal states moreover that the goods are ‘ointments for wounds, sores, etc.’.

30      The Board of Appeal was therefore correct to make a comparison between ‘dietary supplements, including dietary supplements inclusive of calcium salt’ and ‘healing salves’, and the contested decision is consequently not wrong in that regard.

31      Therefore, the first plea must be rejected.

 The second plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94

 Arguments of the parties

32      The applicant asserts that the goods at issue in its submission, namely ‘perfumed ointments for the hair, originally made from apples’, and ‘dietary supplements, including dietary supplements inclusive of calcium salt’, are not similar. If dietary supplements were to be compared with ‘healing pomades (cicatrisant)’, that would require the Court to ignore the fact that the latter expression is a ‘nonsense’, as pomades do not heal and are devoid of any properties associated with a cicatrisant.

33      Concerning the comparison of the signs, the applicant accepts that there are certain visual and phonetic similarities between the marks. However, it states that the earlier mark CICATRAL alludes to the Spanish word ‘cicatriz’ (scar), whereas the mark applied for CITRACAL alludes to ‘citrico’ (citric) and ‘calcio’ (calcium). There is, therefore, no likelihood of confusion on the part of the relevant public.

34      With regard to the likelihood of confusion, the applicant argues that it is an error to consider that all goods in Class 5 are similar merely because they are in the same class. It states that the dietary supplement CITRACAL comes as a pill, whereas the product CICATRAL is sold as a cream. It concludes that there is no likelihood of confusion for the relevant public, which is deemed to be reasonably well informed and reasonably observant and circumspect.

35      OHIM disputes the applicant’s arguments. It contends, in essence, that the Board of Appeal was correct to compare the dietary supplements at issue with healing salves, that the goods are similar under trade mark law, that the conceptual differences between the signs cannot offset their high degree of visual and phonetic similarity, and concludes that there is a likelihood of confusion in the present case.

 Findings of the Court

36      Under Article 8(1)(b) of Regulation No 40/94, 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 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), ‘earlier trade marks’ means, inter alia, 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.

37      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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and of the goods or services at issue, taking into account 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 identified (see
Case T-162/01 Laboratorios RTB v OHIM– Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33; and judgment of 12 November 2008 in Case T-87/07 Scil proteins v OHIM – Indena (affilene), not published in the ECR, paragraph 30 and the case-law cited).

38      For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. It should also be remembered that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26; and Case T-425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II-4265, paragraph 48).

39      In the present case, the earlier mark CICATRAL is registered in Spain, which is therefore the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 40/94. Furthermore, taking the nature of the goods into account, the Board of Appeal held at paragraph 16 of the contested decision that the relevant public was the reasonably well-informed and reasonably observant and circumspect average consumer.

40      In the light of the foregoing considerations, it is necessary to make a comparison, first, of the relevant goods and, second, of the signs at issue, before ruling on the likelihood of confusion.

–       The comparison of the goods

41      Concerning the goods at issue, it is apparent from the consideration of the first plea that the Board of Appeal was fully entitled to make the comparison between ‘dietary supplements, including dietary supplements inclusive of calcium salt’ and ‘healing salves’ (see paragraphs 28 to 30 above).

42      In assessing the similarity of the goods covered by the marks at issue, all the relevant factors relating to the relationship between those goods should be taken into account, including, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Case C-39/97 Canon [1998] ECR I-5507, paragraph 23; and affilene, paragraph 37 above, paragraph 35).

43      In the present case, the goods at issue, pharmaceutical products supplied without prescription, are of the same nature and have the same function or intended purpose, namely the treatment of human health problems. They can be intended for the same ultimate consumers, are likely to be produced by the same manufacturers and use the same distribution channels, namely pharmacies. The fact that they are complementary in some cancer therapies was also pointed out at paragraph 23 of the contested decision without being disputed by the applicant.

44      Admittedly, as the applicant points out and as the Board of Appeal accepts in paragraph 23 of the contested decision, there is a difference between the two products arising from the way they are administered. The ‘healing salve’ is to be applied in particular to wounds and sores, whereas the ‘dietary supplements, including dietary supplements inclusive of calcium salt’ are intended to be ingested as supplements to daily nutrition. Their therapeutic indications are also different.

45      However, it follows from the case-law that, where the difference between the goods arises from the way they are administered, such a difference is not sufficient in itself to prevent those goods from being found to be similar (see, to that effect, Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 74; and Case T-154/03 Biofarma v OHIM – Bausch & Lomb Pharmaceuticals (ALREX) [2005] ECR II-4743, paragraph 50). The same applies to the differences arising from different therapeutic indications (see, to that effect, Case T-483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) [2006] ECR II-4109, paragraphs 69 to 71).

46      Consequently, taking into account the similarities already noted (see paragraph 43 above), the differences relating to the ways in which the products are administered and their therapeutic indications cannot, in the present case, prevail over the nature and the common intended purpose of the relevant goods.

47      The applicant’s argument that goods in Class 5 cannot all be considered to be similar does not invalidate that conclusion, since, in the contested decision, the Board of Appeal did not rely solely on the fact that the goods are in Class 5 in order to conclude that they are similar (see paragraph 16 above).

48      Therefore, the Board of Appeal did not err in holding that the goods at issue were similar for the purposes of Article 8(1)(b) of Regulation No 40/94.

–       The comparison of the signs

49      According to settled case-law, the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression produced by those signs, bearing in mind, inter alia, their distinctive and dominant components (see, to that effect, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23; and Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47).

50      In the present case, the signs at issue are the earlier word mark CICATRAL and the word sign CITRACAL, registration of which is applied for.

51      Visually and phonetically, the signs are very similar. Each sign is made up of the same eight letters and has three syllables. Both signs start with ‘ci’ and end with ‘al’ and the inversion of the syllables in the middle of the signs is not enough to disturb the overall impression of similarity.

52      Therefore, it must be held that the visual and phonetic similarities between the signs at issue are such that those signs have a high degree of similarity in that regard. Moreover, the applicant recognises itself certain visual and phonetic similarities between the signs in question.

53      Conceptual differences are capable of offsetting to a large extent visual or phonetic similarities between marks where at least one of the marks at issue has a clear and established meaning for the relevant public so that that public is likely to understand it immediately (judgment of 13 April 2005 in Case T-353/02 Duarte y Beltrán v OHIM – Mirato (INTEA), not published in the ECR, paragraph 34). In the present case, it is not disputed that the signs CICATRAL and CITRACAL are imaginary words without any direct meaning in Spanish. It cannot therefore be held that at least one of the signs at issue has a clear and established meaning which could be immediately understood by the relevant public.

54      The applicant states, nonetheless, that the earlier mark CICATRAL alludes to the Spanish word ‘cicatriz’ (scar), whereas the mark applied for CITRACAL alludes to ‘citroco’ (citric) and ‘calcio’ (calcium). However, assuming that the relevant public is able to understand those allusions referred to by the applicant, they are not such as to evoke on the part of that public an image strong enough to offset the visual and phonetic similarities between the signs at issue.

55      It is true that the average consumer, perceiving a word sign, will break it down into word elements which, for him, have a concrete meaning or which resemble words known to him (Case T-356/02 Vitakraft-Werke Wührmann v OHIM − Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 51; and Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 57). However, that will not be so in the present case. The word elements ‘cica’ and ‘citra’ do not have any concrete meaning, any more than do the endings ‘tral’ and ‘cal’. The signs at issue are therefore not likely to be broken down by the public into word elements which have a concrete meaning or resemble words known to it and which, together, would form a coherent whole giving a meaning to each of the signs at issue or to one of them.

56      In view of the fact that the signs at issue have no conceptual content, their visual and phonetic similarities cannot be offset by the differences between them.

57      Therefore, taking into account the high degree of visual and phonetic similarity between the signs in question, they must be held to be very similar overall.

–       The likelihood of confusion

58      The global assessment of the likelihood of confusion, as has already been pointed out (see paragraphs 37 and 38 above), involves a certain interdependence between the factors taken into account.

59      In the present case, since the goods at issue are similar and the signs at issue are very similar overall, it must be held that there is a likelihood of confusion.

60      Therefore, the Board of Appeal was fully entitled to hold that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

61      It follows that the action must be dismissed as unfounded.

 Costs

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

63      Since the present action is dismissed, there is no need to adjudicate on the applicant’s head of claim seeking an order for costs against the opponent.

On those grounds,

THE COURT OF FIRST INSTANCE (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Bayer Healthcare LLC to pay the costs.

Jaeger

Dehousse

Wiszniewska-Białecka

Delivered in open court in Luxembourg on 11 November 2009.

[Signatures]