JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

9 February 2011 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark ALPHAREN – Earlier national word marks ALPHA D3 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Examination of the facts of its own motion – Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009))

In Case T‑222/09,

Ineos Healthcare Ltd, established in Warrington, Cheshire (United Kingdom), represented by S. Malynicz, Barrister, and A. Smith, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Teva Pharmaceutical Industries Ltd, established in Jerusalem (Israel),

ACTION against the decision of the Second Board of Appeal of OHIM of 24 March 2009 (Case R 1897/2007-2), concerning opposition proceedings between Teva Pharmaceutical Industries Ltd and Ineos Healthcare Ltd,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of the deliberation, of O. Czúcz, President, I. Labucka (Rapporteur) and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 1 June 2009,

having regard to the response lodged at the Court Registry on 2 October 2009,

having regard to the applicant’s letter of 14 May 2010 stating that it no longer wished to be heard at a hearing,

having regard to the Court’s written questions to the parties,

having regard to the observations lodged by the parties at the Court Registry on 11 and 14 June 2010,

gives the following

Judgment

 Background to the dispute

1        On 3 March 2005, the applicant, Ineos Healthcare Ltd, 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)).

2        The trade mark in respect of which registration was applied for is the word sign ALPHAREN.

3        The goods for which registration was applied for, after the limitation made during the proceedings before OHIM, fall within Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and consist of the following: ‘Pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds; pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments; phosphate binders for use in the treatment of hyperphosphataemia’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 49/2005 of 5 December 2005.

5        On 6 March 2006, Teva Pharmaceutical Industries Ltd (‘the opposing party’) filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against 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:

–        Hungarian word mark ALPHA D3 No 134 972 for ‘pharmaceutical preparation for regulating calcium’ in Class 5;

–        Lithuanian word mark ALPHA D3 No 20 613 for ‘pharmaceutical preparation for calcium regulation’ in Class 5; and

–        Latvian word mark ALPHA D3 registered as No M 30 407 for ‘a pharmaceutical preparation being a calcium regulator’ in Class 5.

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

8        On 9 October 2007, the Opposition Division upheld the opposition in its entirety on the basis of the earlier Hungarian trade mark.

9        On 29 November 2007, the applicant filed a notice of appeal at OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

10      By decision of 24 March 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Specifically, it held that the earlier Hungarian mark could not be taken into consideration because there was no translation of the registration certificate into the language of the proceedings. The fact that the opposition was upheld on the basis of the earlier Hungarian mark alone would in itself justify the annulment of the decision of the Opposition Division. Nevertheless, by holding that a decision with the same operative part as that of the Opposition Division could be adopted at the time of the appeal ruling, the Board of Appeal, exercising its discretion, examined the other marks on which the opposition was based. In that regard, it pointed out, in particular, that the goods covered by the Latvian and Lithuanian registrations were identical to those covered by the earlier Hungarian trade mark and that the parties had had the opportunity to comment on all the facts of the case. It observed that the signs at issue show a certain degree of visual, phonetic and conceptual similarity. Similarly, it concluded that the goods were in part identical and in part similar. The Board of Appeal stated that that factor outweighed the lesser degree of similarity between the marks. It concluded, in essence, that there was a likelihood of confusion on the part of the average consumer, who is a member of the relevant public and, not having the same level of knowledge and ability in biochemistry and pharmacology as professionals in those fields, is more vulnerable to such confusion.

 Procedure and forms of order applied for by the parties

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant puts forward four pleas in law relating to, firstly, the opposing party’s failure to adduce evidence of the similarity between the goods, secondly, infringement of Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009), thirdly, infringement of Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009) and, fourthly, infringement of Article 8(1)(b) of Regulation No 40/94 as regards the identification of the relevant public.

 The first plea in law, relating to the opposing party’s failure to adduce evidence of the similarity between the goods

 Arguments of the parties

14      The applicant submits that, in the light of the case-law of the Court of Justice, in order to assess the similarity of goods in the context of opposition proceedings, the burden of proof lies on the opposing party. The demonstration of the alleged similarity between the goods by the opposing party is insufficient and is confined to two letters sent to the applicant and a patient information leaflet. Moreover, the applicant also disputes the probative nature of that leaflet. The applicant adds that the evidence must relate to all factors relevant to the comparison of the goods, including their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.

15      OHIM disputes the applicant’s arguments.

 Findings of the Court

16      It follows from Rule 15(2)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303 p. 1), that the notice of opposition must contain, inter alia, the grounds on which the opposition is based. Rule 15(3)(b) of that regulation states that the notice of opposition may contain a reasoned statement setting out the main facts and arguments on which the opposition relies, and evidence to support the opposition. Rule 19(1) of that regulation states that OHIM is to give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time-limit specified by it and which must be at least 2 months starting on the date on which the opposition proceedings are to be deemed to commence in accordance with Rule 18(1).

17      It follows from the provisions referred to above that, in opposition proceedings, the opposing party has the opportunity and not the obligation to adduce evidence in support of the opposition, in particular as regards the similarity of the goods and services concerned.

18      In that regard, it must be found that, as is apparent from the OHIM file, by letter of 7 April 2006, OHIM, pursuant to Rule 19(1) of Regulation No 2868/95, invited the opposing party to provide the facts, evidence and arguments in support of its opposition or to complete those on the opposition form, stating that, if they were not communicated, it would adopt the decision on the opposition on the basis of the evidence before it.

19      By letter of 18 July 2006, the opposing party presented additional arguments. The applicant then filed its observations by letter of 31 October 2006, on which the opposing party took a position in a letter of 16 February 2007.

20      It is also appropriate to state that, contrary to the claim, in essence, made by the applicant, the Court of Justice, in its order of 9 March 2007 in Case C‑196/06 P Alecansan v OHIM, not published in the ECR, paragraph 24, did not make any ruling on the question of the burden of proof allegedly lying on the opposing party in opposition proceedings. In paragraph 24 of that order, the Court merely highlighted the requirement to prove, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, similarity between the goods even where the signs are identical.

21      Similarly, the evidence referred to in Rule 15(3)(b) of Regulation No 2868/95 need not necessarily cover all aspects of the comparison of the goods, contrary to the applicant’s claim.

22      In the light of all the foregoing, there is therefore no obligation on the opposing party, in opposition proceedings, to adduce evidence on the similarity of the goods at issue. It also follows that the applicant’s argument concerning the probative nature of a patient information leaflet provided to OHIM by the opposing party is devoid of relevance in the context of this plea. Consequently, the present plea must be rejected.

 The second and third pleas in law, alleging infringement of Article 73 and Article 74 respectively of Regulation No 40/94

23      Since the second and third pleas both concern the use by the Board of Appeal of certain research to establish similarities between the goods covered by the earlier Latvian and Lithuanian marks and, in particular, the ‘pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds’ (‘goods in category A’) and the ‘phosphate binders for use in the treatment of hyperphosphataemia’ (‘goods in category C’) covered by the trade mark applied for, the Court considers it appropriate to examine the second and third pleas together, starting with the third plea.

 Arguments of the parties

24      In respect of its third plea, the applicant submits that, by having carried out, of its own motion, research on the internet for the purposes of the comparison of the goods, as is apparent from paragraph 40 of the contested decision, the Board of Appeal breached its obligation under Article 74 of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, it must restrict its examination to the facts, evidence and arguments provided by the parties and the relief sought. That research consisted in consulting an online medical dictionary, an American Government internet site devoted to clinical trials and the internet site of a company distinct from the applicant but part of the same group of companies. It also submits that, with regard to the similarity of the goods covered by the earlier Latvian and Lithuanian marks and the goods in category A and the goods in category C covered by the mark applied for, the information obtained by the Board of Appeal from the internet played a decisive role.

25      In respect of its second plea, the applicant complains, in essence, that the Board of Appeal based the contested decision on grounds on which it had not had an opportunity to present its comments. Indeed, it argues that it never had the opportunity to comment on the evidence found by the Board of Appeal on the internet. It adds that, if it had had the opportunity to comment on that evidence, it could have shown which factors made a conclusion that the goods were similar unlikely.

26      With regard to the third plea, OHIM submits that, in the light of the judgment of 24 September 2008 in Case T‑179/07 Anvil Knitwear v OHIM – Aprile e Aprile (Aprile) (not published in the ECR, paragraphs 72 and 75), the Board of Appeal was not entitled to consider established the opposing party’s argument as to the similarity of the goods at issue in the absence of counterarguments submitted by the applicant. It was therefore under a duty to carry out its own examination of the similarity of the goods, on the basis of the lists of goods covered by the marks at issue. OHIM submits that, in those circumstances, the Board of Appeal could as a matter of law make investigations of its own motion in neutral sources of information or in sources of information known to the applicant, provided that these investigations were made only for the purpose of reviewing the accuracy of the opposing party’s claims and arguments.

27      With regard to the second plea, OHIM disputes the applicant’s arguments, stating that, in the light of the Court’s case-law, the right to be heard, as enshrined in the second sentence of Article 73 of Regulation No 40/94 (now the second sentence of Article 75 of Regulation No 207/2009), does not apply to the final position which the administration intends to adopt. The same is true of the documents which corroborate and form part of a final position adopted on the similarity of the goods. In addition, the documents found on the internet only confirmed the initial position of the Board of Appeal, set out in paragraph 42 of the contested decision. It adds that the applicant could have commented on the opposing party’s assertions before the contested decision was adopted, but it did not do so. Finally, OHIM submits that, even if the Board of Appeal made an error in failing to submit the internet search results to the parties, the outcome of the comparison of the goods would remain unaffected. Such an infringement of Article 73 of Regulation No 40/94 does not justify the annulment of the contested decision.

 Findings of the Court

28      Under Article 74(1) of Regulation No 40/94, ‘in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.

29      That provision relates, in particular, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence which the parties have presented. However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraphs 28 and 29 and the case-law cited, and Aprile, paragraph 71).

30      In the present case, the Board of Appeal referred, in paragraphs 40 and 41 of the contested decision, to the results of its internet research. More specifically, as is apparent from paragraph 40 of the contested decision, it used the definition of hyperphosphataemia, included in the specification of the goods in category C of the mark applied for, which it found in the online dictionary of medical terms. It also searched on an American Government internet site devoted to clinical trials for the therapeutic indications of magnesium iron hydroxy carbonate or hydrotalcite included in the goods in category A of the mark applied for. Finally, it referred, in paragraph 41 of the contested decision, to information on the interaction of the goods at issue, showing that they are closely related and that they are intended for patients suffering from kidney disease, found on the internet site of a company distinct from the applicant but part of the same group. These facts are not disputed by OHIM.

31      Although the results of the research in question were taken from the internet sites referred to in paragraph 30 above, which are generally accessible sites, that fact is not sufficient in the present case for it to be considered that well-known facts are involved. They are, in fact, a description of pharmaceutical preparations and their therapeutic indications which, having regard to their highly technical nature, cannot in any way be regarded as information constituting well-known facts.

32      Accordingly, by taking account of the results of the internet searches referred to in paragraph 30 above, the Board of Appeal infringed Article 74 of Regulation No 40/94 since the facts revealed by its internet research to which it referred are not well-known facts.

33      Nevertheless, in accordance with settled case-law, if, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error is nugatory and thus cannot suffice to justify annulling the contested decision (see judgment of 12 September 2007 in Case T‑140/06 Philip Morris Products v OHIM (Shape of a cigarette packet), not published in the ECR, paragraph 72 and the case-law cited).

34      In that regard, it must be noted that the essential part of the description of the goods in categories A and C covered by the mark applied for was taken exclusively from the internet search results referred to in paragraph 30 above. Furthermore, it must be borne in mind that the description of the goods at issue constitutes the starting point of any comparison of the goods, which is an essential stage in the assessment of the likelihood of confusion. In the present case, it is appropriate to point out that the Board of Appeal could not have reached the conclusion that there was similarity between the goods in category A and the goods in category C, on the one hand, and the goods covered by the earlier Latvian and Lithuanian marks, on the other, and, consequently, concluded, in paragraph 58 of the contested decision, that there was a likelihood of confusion, without referring to the facts taken from the disputed research. Accordingly, without the use of the information in question the contested decision would have been substantially different, contrary to the submissions of OHIM.

35      By contrast, with regard to the ‘pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments’ (‘the goods in category B’) covered by the mark applied for, the information taken from the disputed research, referred to in paragraph 41 of the contested decision, merely confirmed the conclusion of the Board of Appeal on the similarity of the goods at issue. In consequence, the infringement of Article 74 of Regulation No 40/94, found in paragraph 32 above, does not justify annulling the contested decision as regards the goods in category B.

36      Moreover, the Court must also reject OHIM’s argument concerning the consequences to be drawn from Aprile (paragraphs 72 and 75). Although it is true that, in that judgment, the Court stated that OHIM is not required to accept that the points put forward by one party and not challenged by the other party to the proceedings are established, it did not state that OHIM is authorised to exceed the conditions governing examination laid down in Article 74 of Regulation No 40/94.

37      It follows from all the foregoing that the use by the Board of Appeal of the results of its internet research referred to in paragraph 30 above is vitiated by error, so that the third plea must be accepted to the extent that the Board of Appeal confirmed, in the contested decision, the refusal to register the sign applied for in respect of the goods in categories A and C, and it must be rejected in respect of the goods in category B, without it being necessary for the Court to rule on the second plea.

38      Since the contested decision has been annulled in part following examination of the third plea, the fourth plea must also be considered.

 The fourth plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94 as regards identification of the relevant public

 Arguments of the parties

39      The applicant argues that the Board of Appeal erred in its identification of the relevant public in holding, in paragraph 36 of the contested decision, that the goods at issue were also available for the general public over the counter at pharmacies. The applicant disputes that assertion for two reasons. Firstly, with regard to the goods covered by the earlier Latvian and Lithuanian marks, the only piece of evidence, that is to say, the patient information leaflet, shows that alfacalcidol, a pharmaceutical preparation falling within the category of goods covered by the earlier marks, was available only on prescription. That finding alone could have allowed a conclusion that the relevant public was specialised. Similarly, in its submission, the goods covered by the mark applied for are likely to be issued only on prescription. In holding, in paragraph 58 of the contested decision, that average consumers have an above-average level of attention, the Board of Appeal ignored the fact that such consumers have a prescription or, at the very least, the specialist assistance of a qualified medical professional.

40      OHIM disputes the applicant’s arguments.

 Findings of the Court

41      In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 OHIMAltana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

42      In the present case, the Board of Appeal considered, in paragraph 36 of the contested decision, that the relevant public included both medical professionals (doctors, pharmacists, nurses) and average consumers, that is to say, patients and those who take care of them. It took the view that it was not possible to exclude the average consumer from the relevant public, given that the specification of the goods was not limited to prescription-only medicines and that therefore it could not be excluded that they might also be available over the counter. Given that the earlier marks were registered in Latvia and Lithuania, the relevant public comprises, according to the Board of Appeal, medical professionals and average consumers in those two countries.

43      According to case-law, where the goods at issue are medicinal products requiring a doctor’s prescription prior to their sale to end-users in pharmacies, the relevant public comprises both end-users and health professionals, that is to say doctors who prescribe the medicinal product and pharmacists who sell the prescribed medicinal product. Even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for consumers since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times (see, to that effect, Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraphs 52 to 63).

44      As is apparent from the case-law cited above, even in the case of medicinal products available only on prescription, it cannot be excluded that the average consumer form part of the relevant public. Accordingly, the Board of Appeal rightly held that the relevant public comprised both health professionals and average consumers.

45      Consequently, it is not relevant to the present case whether the medicinal products in question were available over the counter since, even if the Board of Appeal erred in its assessment as to the method of sale of the goods at issue, the conclusion regarding the composition of the relevant public would remain unchanged.

46      It follows that the present plea must be rejected. In the light of all the foregoing, the contested decision must be annulled as regards the goods in category A and the goods in category C.

 Costs

47      Pursuant to Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads the Court may order that the costs be shared. In the present case, since the applicant’s action was successful only in respect of some of the goods at issue, it must be decided that OHIM will bear its own costs and pay half of the costs incurred by the applicant.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 March 2009 (Case R 1897/2007-2) as regards the goods in the following categories: ‘Pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds’, ‘Phosphate binders for use in the treatment of hyperphosphataemia’;

2.      Dismisses the action as to the remainder;

3.      Orders OHIM to bear its own costs and to pay half of the costs incurred by Ineos Healthcare Ltd;

4.      Orders Ineos Healthcare to bear half of its own costs.

Czúcz

Labucka

O’Higgins

Delivered in open court in Luxembourg on 9 February 2011.

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