JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

16 December 2010 (*)

(Community trade mark – Opposition proceedings – Application for Community word mark RESVEROL – Earlier international word mark LESTEROL – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑363/09,

Longevity Health Products, Inc., established in Nassau (Bahamas), represented by J. Korab, lawyer,

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

Gruppo Lepetit SpA, established in Lainate (Italy),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 9 July 2009 (Case R 1204/2008-2) relating to opposition proceedings between Gruppo Lepetit SpA and Longevity Health Products, Inc.,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 17 September 2009,

having regard to the response lodged at the Court Registry on 21 December 2009,

having regard to the decision of 2 March 2010 not to allow the lodging of a reply,

having regard to the fact that no application for a hearing was submitted by the parties within a 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,

having regard to the change in the composition of the Chambers of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 19 July 2006, the applicant, Longevity Health Products, Inc., 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 mark for which registration was sought is the word sign RESVEROL.

3        The goods and services for which registration was sought are, in particular, in 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 correspond to the following description: ‘Pharmaceutical and veterinary preparations; preparations for health care; dietetic substances adapted for medical use, preparations of trace elements for human and animal use, food supplements for medical purposes, mineral food supplements, vitamin preparations’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2/2007 of 15 January 2007.

5        On 16 April 2007, Gruppo Lepetit SpA filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to 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 international word mark LESTEROL, registered on 5 May 1960 under number 231327, which has effect in Austria, the Benelux countries, Germany, France, Hungary and Romania, and designates the goods in Class 5 corresponding to the following description: ‘Preparation for combating arteriosclerosis’.

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

8        On 25 July 2008, the Opposition Division upheld the opposition.

9        On 19 August 2008, 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 decision of the Opposition Division.

10      By decision of 9 July 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In essence, it found that the goods concerned were identical or similar, that the marks at issue displayed at least a medium degree of visual and phonetic similarity and that, conceptually, the marks had no meaning. The Board of Appeal held that there was a likelihood of confusion between the Community trade mark applied for and the earlier mark and that, in any event, that likelihood could not be ruled out on the basis that the relevant public, composed of health professionals and average consumers in Austria, the Benelux countries, Germany, France, Hungary and Romania, had an above-average level of attention.

 Forms of order sought by the parties

11      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the opposition;

–        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      The applicant relies on a single plea in law alleging, in essence, infringement of Article 8(1)(b) of Regulation No 207/2009.

 Arguments of the parties

14      First, the applicant complains that the Board of Appeal refused to examine its arguments aimed at demonstrating that the signs were not identical or similar, by merely finding that the obvious similarities between the names of the two marks at issue were sufficient to justify the presumption of a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009.

15      Second, as regards the comparison of the signs, the applicant submits, first of all, that, visually, the letters of the marks RESVEROL and LESTEROL are in a different order. In any event, the first letter, which is the most decisive for the visual impression, is different.

16      In addition, phonetically, the marks at issue display clear differences. The pronunciation of a trade mark is of the utmost importance for the impression that consumers will retain of it, so that for this reason alone it cannot be accepted that there is a likelihood of confusion.

17      Third, as regards whether there is a likelihood of confusion, the applicant submits that an increased level of attention may be expected of the public concerned, since, as a rule, confusion between health products produces particularly disagreeable consequences.

18      The applicant submits, lastly, that the proprietor of the earlier mark does not use that mark and that it has even withdrawn the product designated by the mark from the market.

19      OHIM disputes all the applicant’s arguments.

 Findings of the Court

20      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with, or similarity to, an 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)(iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements, which have effect in a Member State, with a date of application for registration that is earlier than the date of application for registration of the Community trade mark.

21      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 the same 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, in particular the interdependence between the similarity of the signs and that of the goods or services designated (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).

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

23      As regards, in the first place, the relevant public, none of the parties disputes that this is made up of end consumers and health professionals in Austria, the Benelux countries, Germany, France, Hungary and Romania.

24      In addition, as regards pharmaceutical preparations, it should be noted that the level of attention of the average consumer will be high, or at least higher (see, to that effect, judgment of 28 September 2010 in Case T‑201/08 Market Watch v OHIM – Ares Trading (Seroslim), not published in the ECR, paragraphs 25 to 29). Thus, in the light of the goods at issue, the level of attention of the relevant public composed of professionals and end consumers of cosmetics, pharmaceutical preparations and printed material relating to those goods will be relatively high (judgment of 28 October 2010 in Case T-131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraphs 25 and 65).

25      As regards, in the second place, the comparison of the goods at issue, the applicant does not dispute the Board of Appeal’s finding, at paragraph 23 of the contested decision, that those goods are identical or similar.

26      As regards, in the third place, the comparison of the signs at issue, it must be recalled that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case-law cited).

27      As regards, first of all, the visual comparison of the signs, the Board of Appeal rightly found, at paragraph 25 of the contested decision, that the earlier mark LESTEROL and the trade mark applied for RESVEROL were both composed of eight letters, six of which were common to both marks, that the marks contained the same sequence of vowels, ‘e’, ‘e’, ‘o’, and the same suffix ‘erol’, and that only the initial letters, ‘l’ and ‘r’, and the fourth letters, ‘t’ and ‘v’, were different. In addition, although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II-2737, paragraph 51, and Case T-109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 30), it cannot be inferred from this, however, that in the present case the difference between the letters ‘l’ and ‘r’ can prevent the signs at issue from being similar, since, first, both letters are consonants and, second, the consumer will not stop at the first letter, but will consider at least the first syllable. Further, the next two letters in the first syllables of the signs at issue are identical. Thus, the differences between the marks cannot counteract the similarities and it must be found that there is an average degree of visual similarity.

28      As regards, next, the phonetic comparison of the signs, it must be held, as the Board of Appeal found at paragraph 26 of the contested decision, that in the countries concerned the marks at issue are pronounced as they are written. In addition, the marks at issue both contain three syllables with the same number of letters, and sound similar as the vowels used are the same. The marks also have identical suffixes. The first syllables of the signs at issue also sound equally similar since, first, two of their three letters are identical and, second, the initial letters, ‘l’ and ‘r’, are constrictive consonants that are similar sounding. Further, as has been observed at paragraph 27 above, the consumer tends to pay greater attention to the beginning of a mark than to the end. In the light of the foregoing, the differences between the initial letters are not sufficiently striking so as to counteract the phonetic similarity of the marks. Consequently, it must be held that there is an average degree of phonetic similarity.

29      In that connection, although the applicant submits that the differences between the signs at issue are obvious from the point of view of the relevant consumer, it puts forward no evidence to support its claims. In addition, in the light of the foregoing, even if proved, such considerations cannot affect the assessment that an average degree of phonetic similarity must be found.

30      As regards, lastly, the conceptual comparison of the signs, it must be held, as OHIM contended at paragraph 25 of its response, that no relationship can be established between the signs at issue and chemical nomenclature and that, in any event, the signs have no meaning.

31      As regards, finally, the likelihood of confusion, it must be recalled that 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 that of the goods or services covered. Accordingly, a low degree of similarity between these goods or services may be offset by a high 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).

32      Thus, it must be held, in the light of the foregoing, that since the signs at issue are similar and the goods covered identical or similar, the Board of Appeal rightly found, after it had indeed examined the arguments submitted by the applicant, that there was a likelihood of confusion.

33      Given the degree of similarity found between the marks and the identical nature of the goods concerned, the fact that the level of attention of the relevant public is above average, since that public is composed of health professionals and end consumers of health products, is not sufficient to exclude the possibility that that public might believe that the goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings (Case T-483/04 Armour Pharmaceutical v OHIM – Teva Pharmaceutical Industries (GALZIN) [2006] ECR II-4109, paragraph 80, and the judgment of 21 October 2008 in Case T-95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 56).

34      As regards the applicant’s argument relating to an alleged failure to use the earlier mark, that argument is inadmissible in so far as the applicant did not submit a request to OHIM, pursuant to Article 42(2) of Regulation No 207/2009, for proof of genuine use of the mark. In any event, the production of such proof cannot be required in the context of an action before the General Court, when it was not required before OHIM (judgment of 7 November 2007 in Case T-57/06 NV Marly v OHIM – Erdal (Top iX), not published in the ECR, paragraph 18).

35      Consequently, the action must be dismissed.

 Costs

36      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.

37      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Longevity Health Products, Inc., to pay the costs.

Papasavvas

Vadapalas

O’Higgins

Delivered in open court in Luxembourg on 16 December 2010.

[Signatures]