JUDGMENT OF THE GENERAL COURT (First Chamber)

21 January 2014 (*)

(Community trade mark – Opposition proceedings – Application for Community figurative mark PROBIAL – Earlier national, international and Community figurative marks, emblem, business name and logo Bial – Relative grounds for refusal – Article 8(1)(b) and 8(4) and (5) of Regulation (EC) No 207/2009)

In Case T‑113/12,

Bial-Portela & Cª, SA, established in São Mamede do Coronado (Portugal), represented by B. Braga da Cruz and J. Pimenta, lawyers,

applicant,

v

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

defendant,

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

Probiotical SpA, established in Novara (Italy), represented by I. Kuschel, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 20 December 2011 (Case R 1925/2010‑4) concerning opposition proceedings between Portela & Ca, SA and Probiotical SpA,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 5 March 2012,

having regard to the response of OHIM lodged at the Registry of the Court on 21 June 2012,

having regard to the response of the intervener lodged at the Registry of the Court on 2 July 2012,

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 11 October 2001, Anidral Srl, now the intervener Probiotical SpA, 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 in respect of which registration was sought is the figurative sign reproduced below:

3        The goods in respect of which registration was sought, after the restriction made during the proceedings before OHIM, are in, inter alia, Class 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Bacterial preparations for pharmaceutical and medical purposes containing probiotic microorganisms; probiotic milk ferments’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 50/2002 of 24 June 2002.

5        On 24 September 2002, Portela & Ca, SA, now the applicant Bial-Portela & Ca, SA, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier marks and rights:

–        the Portuguese word mark Bial, filed on 10 April 1929 and registered on 14 October 1929 under No 155284, and renewed until 15 April 2019, in respect of goods in Class 5 and corresponding to the following description: ‘Pharmaceutical products, articles for dressings, disinfectants, veterinary products’;

–        the word mark Bial, well known in Portugal within the meaning of Article 6bis of the Paris Convention for the Protection of Intellectual Property of 20 March 1883, as revised and amended;

–        the black and white Community figurative mark, filed on 25 November 1999 and registered on 7 April 2009 under No 1400183, in respect of, inter alia, goods and services in Classes 3, 5 and 42 and corresponding to the following description: ‘Food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; fungicides, herbicides’, reproduced below:

–        the black and white Spanish figurative mark, registered on 30 April 1996 under No 2026481 and renewed on 1 June 2006, in respect of services in Class 35 and corresponding to the following description: ‘Advertising services; business management; business administration; office functions’, reproduced below:

–        the international trade mark Bial in standard characters, registered for Benelux, Germany, France, Italy and Austria on 18 December 1984 under No 490635 and renewed until 18 December 2014, in respect of goods in Class 5 and corresponding to the following description: ‘Pharmaceutical products and preparations, chemico-pharmaceutical preparations, veterinary products and disinfectants’;

–        the emblem, used in the course of trade in Portugal, filed on 8 April 1954 and registered on 6 April 1955 under No 868 and corresponding to the following figurative sign:

–        the business name Bial, used in the course of trade in Portugal, filed on 10 September 1991 and registered on 1 July 2002 under No 35157;

–        the logo, used in the course of trade in Portugal, filed on 10 September 1991 and registered on 1 July 1998 under No 951 and corresponding to the following figurative sign:

7        The grounds put forward in support of the opposition were those referred to 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        In its reply to the opposition, the intervener requested the applicant to furnish proof of use of the earlier Portuguese trade mark registered under No 155284, of the earlier Spanish trade mark registered under No 2026481 and of the earlier international registration No 490635, pursuant to Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009). The applicant submitted a variety of evidence in that regard within the time-limit set by OHIM.

9        By decision of 20 April 2009, the Opposition Division upheld the opposition for all of the contested goods on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, with the earlier Community trade mark registered under No 1400183.

10      On 18 June 2009, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11      By decision of 9 March 2010, the Second Board of Appeal annulled the decision of the Opposition Division, holding that the trade mark applied for and the earlier Community trade mark registered under No 1400183 were not similar and that there was therefore no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. It also remitted the case to the Opposition Division so that the latter could rule on the opposition in so far as it was based on the other rights claimed, both under Article 8(1)(b) of Regulation No 207/2009 and under Article 8(4) of that regulation. No appeal was brought against the above decision of 9 March 2010.

12      Following that referral, the Opposition Division, by decision of 4 August 2010, rejected the opposition in its entirety. With regard to Article 8(1)(b) of Regulation No 207/2009, it held that, in view of the fact that the Second Board of Appeal, in its decision of 9 March 2010, had ruled out any likelihood of confusion in the European Union between the earlier Community trade mark registered under No 1400183 and the trade mark applied for, on the ground that the signs at issue were not similar, it would be inconsistent and contrary to the principle of equality to reach a different conclusion in respect of the other earlier marks and rights invoked, with regard to which the same findings as those expressed by the Second Board of Appeal in relation to the above Community trade mark were necessarily to be applied, given the identity or close similarity of the various earlier rights and marks invoked by the applicant. With regard to Article 8(4) of Regulation No 207/2009, the Opposition Division held that, in any event, an action based on Article 239(f) of the Portuguese Industrial Property Code would succeed only in the case where it was established that consumers were liable to be misled or confused. Such could not be the position in the present case, given the overall dissimilarity of the conflicting signs.

13      On 4 October 2010 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division of 4 August 2010.

14      Before the Board of Appeal, the applicant claimed that it was a commercial company with the mission to discover and supply therapeutic solutions in the area of health, known for eight decades under the business name BIAL or LABORATÓRIOS BIAL. Those names, it submitted, are well known in Portugal in the field of manufacture and marketing of pharmaceutical products. It also claimed that the trade mark ‘BIAL’ is well known and enjoys a reputation in Portugal. The applicant referred to the documents which it had submitted as proof of use in the opposition proceedings. It further claimed that the goods in conflict were identical and that the signs in conflict were highly similar. It concluded that all the requirements of Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009 had been fulfilled, with the result that the opposition should be upheld.

15      In its reply, the intervener contended that the differences between the goods and the marks in dispute were sufficient to avoid any likelihood of confusion. The enhanced distinctiveness and genuine use of the earlier marks had not, it argued, been proved. None of the documents produced by the applicant refers to the earlier trade marks, but all of them refer to the applicant in general. As regards Article 8(5) of Regulation No 207/2009, the applicant had not proved the existence of any potential detriment or unfair advantage. The opposition should therefore, it argued, be rejected on the basis of Article 8(1), (4) and (5) of Regulation No 207/2009.

16      By decision of 20 December 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal in its entirety.

17      In the contested decision, the Fourth Board of Appeal found, first of all, that the opposition was based on several earlier rights and that, by decision of 9 March 2010, the Second Board of Appeal had rejected the opposition in so far as it was based on the earlier Community trade mark registered under No 1400183. As no appeal had been brought against that decision, it had become final. From this the Board of Appeal inferred that that Community trade mark could no longer form a basis for the opposition and that the examination thereof was therefore restricted to the other earlier rights on which the opposition was based. The Board of Appeal found, moreover, that the notice of opposition indicated that the grounds on which the opposition was based were Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a) and (c) of that regulation, and Article 8(4) of that regulation. Article 8(5) of Regulation No 207/2009 was not mentioned as a ground for the opposition in the notice of opposition. In so far as Rule 15 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the notice of opposition must contain the grounds on which the opposition is based, the applicant could not rely on that ground, to which it referred for the first time before the Board of Appeal.

18      The Board of Appeal then went on to state that the applicant had not submitted sufficient evidence, in accordance with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation No 2868/95, to demonstrate genuine use of the earlier Portuguese trade mark registered under No 155284 and the international registration No 490635 having effect in Benelux, Germany, France, Italy and Austria during the relevant period, namely from 24 June 1997 to 24 June 2002. The evidence merely confirmed ‘the existence of a company in Portugal with the name “Bial” producing pharmaceutical products, being actively involved in the “Bial foundation” and having a branch in Spain’. Moreover, that evidence also included proof of genuine use of the mark Bial in Spain. The evidence furnished did not, however, include any solid and objective proof that the applicant had actually sold pharmaceutical products under the trade mark Bial in Benelux, Germany, France, Italy, Austria or Portugal during the relevant period and that the element ‘bial’ had therefore been used as a trade mark in one of those countries. The Board of Appeal consequently held that the opposition had to be rejected in so far as it was based on those rights.

19      With regard to the emblem, business name and logo referred to in paragraph 6 above (‘the other earlier signs’), the applicant failed to adduce in good time sufficient evidence, in accordance with Rule 19(2)(d) of Regulation No 2868/95, concerning, in particular, the fact that those signs were used in the course of trade and were of more than merely local significance within the meaning of Article 8(4) of Regulation No 207/2009. Likewise, the applicant failed to prove in good time, in accordance with Rule 19(2)(b) of Regulation No 2868/95, that the mark Bial was well known in Portugal within the meaning of Article 8(2)(c) of Regulation No 207/2009.

20      In those circumstances, the Board of Appeal held, in paragraphs 30 and 31 of the contested decision respectively , that the opposition had, in accordance with Rule 20(1) of Regulation No 2868/95, to be rejected in so far as it was based on the earlier trade mark Bial, well known in Portugal, within the meaning of Article 8(2)(c) of Regulation No 207/2009, and on the other earlier signs, within the meaning of Article 8(4) of that regulation.

21      Finally, with regard to the earlier Spanish trade mark registered under No 2026481, the Board of Appeal held that the services covered by that mark, namely the ‘advertising services; business management; business administration; office functions’ in Class 35, were different from the goods in Class 5 covered by the application for the trade mark, with the result that that ground on its own justified rejection of the opposition based on that mark.

22      In conclusion, the Board of Appeal rejected the opposition partly because the genuine use of certain earlier trade marks had not been proved, partly because the existence of other earlier rights had not been established to the requisite legal standard, and partly because there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

23      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to refuse registration of the Community trade mark PROBIAL;

–        order OHIM to pay the costs.

24      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

25      The intervener claims that the Court should:

–        dismiss the action;

–        uphold in full the decision of the Board of Appeal of 20 December 2011;

–        order the applicant to pay the costs.

 Law

26      The applicant claims, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by holding that, despite the presence of the element ‘bial’ in the various earlier rights and trade marks on which the opposition is based, there was not sufficient visual and phonetic similarity between those earlier rights and trade marks, on the one hand, and the trade mark applied for, on the other hand, for a finding that there was a likelihood of confusion between them. Furthermore, the applicant claims an infringement of Article 8(4) of Regulation No 207/2009 and refers also to Article 8(5) of that regulation.

 The alleged infringement of Article 8(5) of Regulation No 207/2009

27      According to the applicant, the earlier signs have a solid reputation in Portugal. Bial is a trade mark which is well known in Portugal, a fact which gives it increased supplementary protection in accordance with Article 8(5) of Regulation No 207/2009. All of the requirements of that provision are fulfilled for the purposes of refusing registration of the trade mark applied for.

28      OHIM and the intervener dispute the applicant’s arguments.

29      It is clear from a combined reading of Rules 15(2)(c) and 17(2) of Regulation No 2868/95 that the grounds on which the opposition is based must be included in the notice of opposition and that, where such a ground is invoked after the expiry of the three-month opposition period, OHIM must reject it.

30      The Board of Appeal, therefore, acted correctly in pointing out, in paragraph 15 of the contested decision, that the plea alleging an infringement of Article 8(5) of Regulation No 207/2009 could not serve as a basis for the opposition, after having held that reference had been made to that ground for the first time before that Board, a fact which is not contested by the applicant. It is common ground that the applicant had based its notice of opposition solely on Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(a) and (c) thereof, and on Article 8(4) of that regulation.

31      In those circumstances, the plea alleging an infringement of Article 8(5) of Regulation No 207/2009 must be rejected on that ground alone.

 The alleged infringement of Article 8(1)(b) of Regulation No 207/2009

32      In support of this plea, the applicant alleges, in essence, that the trade mark applied for and the earlier marks are highly similar, both visually and phonetically. The likelihood of confusion between those marks is, it argues, increased by the fact that the goods covered by them and which are in Class 5 are identical. According to the applicant, the contested marks are therefore similar to the point of leading to confusion, with the result that all of the conditions referred to in Article 8(1)(b) of Regulation No 207/2009 in order to refuse registration of the trade mark applied for are satisfied.

33      As is apparent from paragraphs 13, 26, 30 and 37 of the contested decision, the Board of Appeal rejected the applicant’s opposition to registration of the trade mark applied for in particular on the grounds that genuine use of the earlier Portuguese trade mark registered under No 155284 and of the earlier international registration No 490635 had not been proved to the requisite legal standard, that the applicant had adduced no evidence that the mark Bial was well known in Portugal, and that there was no likelihood of confusion between the mark applied for and the earlier Spanish mark registered under No 2026481.

34      In the first place, as was stated, as a preliminary remark, in paragraph 14 of the contested decision, the applicant’s opposition was, by decision of the Second Board of Appeal of 9 March 2010, rejected in so far as it was based on the earlier Community trade mark registered under No 1400183. That decision, which was not the subject of an appeal, has become final, with the result that the Board of Appeal was justified in holding in paragraph 14 of the contested decision that that Community trade mark could no longer form a basis for the opposition (see, to that effect, inter alia, judgment of 7 December 2011 in Case T‑152/10 El Corte Inglés v OHIM – Azzedine Alaïa (ALIA) not published in the ECR, paragraph 26), a fact, moreover, which has not been contested by the applicant before the Court.

35      In the second place, as OHIM and the intervener pointed out before the Court, it follows from paragraph 26 of the contested decision that the opposition based on the earlier Portuguese trade mark registered under No 155284 and on the international registration No 490635 was rejected by the Board of Appeal due to the inadequacy of the evidence adduced by the applicant before OHIM for the purpose of establishing that those rights had been the subject of genuine use in accordance with Article 42(2) and (3) of Regulation No 207/2009 and Rule 22(3) of Regulation No 2868/95 during the relevant period, namely from 24 June 1997 to 24 June 2002.

36      It must be held that the applicant has failed to contest and to explain how the findings of the Board of Appeal relating to the lack of proof of genuine use of the earlier trade marks referred to in paragraph 35 above were mistaken. More particularly, the applicant has not taken issue with the finding set out in paragraph 25 of the contested decision, according to which the evidence which it had submitted did not include sufficient information as to the place, time, extent and nature of the use of those trade marks, but confirmed merely ‘the existence of a company in Portugal with the name “Bial” producing pharmaceutical products, being actively involved in the “Bial foundation” and having a branch in Spain’. The applicant also did not take issue with the finding to the effect that, although it provided proof of genuine use of the trade mark Bial in Spain, the evidence submitted did not include solid and objective proof that it had in fact sold pharmaceutical products under the trade mark Bial in Benelux, Germany, France, Italy, Austria or Portugal during the relevant period and that the element ‘bial’ had therefore been used as a trade mark in one of those countries.

37      Even on the assumption that it is possible to interpret the contention expressed in a general and vague way by the applicant at the end of the application, according to which it is prepared to supplement the relevant evidence, as a contestation of the Board of Appeal’s findings set out in paragraph 36 above, suffice it to note that facts which are pleaded before the Court without previously having been brought before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion (judgment in Case T‑28/05 Ekabe International v OHIM – Ebro Puleva (OMEGA3) [2007] ECR II‑4307, paragraph 35), which is not here the case, nor is it even alleged by the applicant.

38      In those circumstances, it must be concluded that the applicant cannot base its opposition on the Portuguese trade mark registered under No 155284 or on the international registration No 490635 without having proved genuine use thereof, with the result that the argument based on those trade marks concerning the assessment of the likelihood of confusion is, in any event, ineffective and must be rejected.

39      In the third place, to the extent to which the applicant relies on the enhanced reputation which, it claims, is enjoyed in Portugal by the well-known trade mark Bial, in accordance with Article 8(2)(c) of Regulation No 207/2009, it must be held, as OHIM submits, that, in paragraph 30 of the contested decision, the opposition, in so far as it was based on that trade mark, was rejected on the ground that the applicant had not submitted, within the prescribed period, which expired in the present case on 11 February 2006, any evidence that that mark was well known in Portugal.

40      As the Board of Appeal correctly pointed out in that respect, Rule 19(2)(b) of Regulation No 2868/95 provides that, if the opposition is based on the existence of a well-known trade mark within the meaning of Article 8(2)(c) of Regulation No 207/2009, evidence of the acquisition, duration and scope of its protection is to be submitted within the time-limit prescribed by OHIM in accordance with Rule 19(1) of Regulation No 2868/95 and which must be two months from the presumed date of initiation of the opposition proceedings, in accordance with Rule 18(1) of that regulation. In the absence of evidence provided within the prescribed period, the opposition is to be rejected as unfounded.

41      As no evidence that the trade mark Bial is well known in Portugal was provided in good time, and as the applicant has not discussed that matter before the Court or alleged that it submitted new evidence that the Board of Appeal should have taken into account, the applicant’s argument relating to the likelihood of confusion between the trade mark applied for and the trade mark Bial allegedly well known in Portugal is, in any event, also ineffective and must be rejected.

42      In the fourth place, with regard to the earlier Spanish trade mark registered under No 2026481, suffice it to note that the applicant does not contest the conclusion reached by the Board of Appeal in paragraph 36 of the contested decision, to the effect that the goods concerned by the application for a trade mark are different from the services in Class 35 for which that earlier trade mark was registered, in their nature, their purpose and their use, and are not complementary or in competition. In those circumstances, the Board of Appeal was justified in holding, in paragraph 37 of the contested decision, that, on that ground alone, the opposition on the grounds of Article 8(1)(b) of Regulation No 207/2009 and based on the Spanish trade mark had to be rejected.

43      In view of the foregoing, the applicant has failed to demonstrate that the Board of Appeal erred in rejecting the plea alleging an infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea must therefore be rejected in its entirety.

 The alleged infringement of Article 8(4) of Regulation No 207/2009

44      The applicant claims that it is necessary to take account, in addition, of Article 8(4) of Regulation No 207/2009. The trade mark applied for, it submits, reproduces the element ‘bial’ which characterises the other earlier signs. The latter are signs which are used in the course of trade and have a nationwide scope in accordance with Article 4(1) of the Portuguese Industrial Property Code. Consequently, the refusal to register the mark applied for is also justified on the basis of Article 8(4) of Regulation No 207/2009.

45      OHIM and the intervener dispute the applicant’s arguments.

46      As the Board of Appeal correctly stated in paragraph 28 of the contested decision, Rule 19(2)(d) of Regulation No 2868/95 provides that, if the opposition is based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009, evidence of the acquisition, duration and scope of its protection must be submitted within the time-limit prescribed by OHIM in accordance with Rule 19(1) of Regulation No 2868/95 and which must be two months from the presumed date of initiation of the opposition proceedings, in accordance with Rule 18(1) of that regulation. In the absence of evidence adduced within the prescribed period, which in the present case expired on 11 February 2006, the opposition is rejected as unfounded.

47      It should be noted that the Board of Appeal, in paragraphs 27 to 31 of the contested decision, rejected the plea based on the use of the other earlier signs in the course of trade, in accordance with Article 8(4) of Regulation No 207/2009, stating that the applicant had failed to prove in good time, that is to say, before 11 February 2006, that those signs were indeed used in the course of trade in Portugal, that they were of more than merely local significance and that, in accordance with Portuguese law, the rights to those signs had been acquired before the date on which the application for a trade mark was made and that those signs conferred on the applicant the right to prohibit the use of the trade mark applied for.

48      In the light of those findings, with which the applicant does not take issue, and to the extent to which it also does not allege that it submitted new evidence which the Board of Appeal should have taken into account, the latter was justified in concluding that the opposition had also to be rejected with regard to the other earlier signs in so far as it was based on Article 8(4) of Regulation No 207/2009.

49      Since none of the pleas raised by the applicant in support of its claims is well founded, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second head of claim.

 Costs

50      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.

51      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.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Bial-Portela & Ca, SA to pay the costs.

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 21 January 2014.

[Signatures]