JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

4 March 2010 (*)

(Community trade mark – Opposition proceedings − Application for the Community word mark AVANZALENE – Earlier Community word mark AVANZ – Likelihood of confusion − 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‑477/08,

Mundipharma AG, established in Basle (Switzerland), represented by F. Nielsen, lawyer,

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, intervener before the Court, being

ALK-Abelló A/S, established in Hørsholm (Denmark), represented by S. Palomäki Arnesen, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 28 August 2008 (Case R 1694/2007-4), relating to opposition proceedings between ALK-Abelló A/S and Mundipharma AG,

THE GENERAL COURT (Fifth Chamber),

composed of M. Vilaras (Rapporteur), President, M. Prek and V.M. Ciucă, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 3 November 2008,

having regard to the response of OHIM lodged at the Registry of the Court on 12 February 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 4 February 2009,

further to the hearing on 3 December 2009,

gives the following

Judgment

 Background to the dispute

1        On 14 September 2005, the applicant, Mundipharma AG, 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 AVANZALENE.

3        The goods in respect of which registration was sought 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 correspond to the following description: ‘Pharmaceutical preparations for human medical use’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 8/2006 on 20 February 2006.

5        On 22 May 2006, the intervener, ALK-Abelló A/S, 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 mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the Community word mark AVANZ, registered on 17 January 2005 under No 3331444 in respect of, inter alia, goods in Class 5 of the Nice Agreement corresponding to the following description: ‘Pharmaceutical preparations, including pharmaceutical preparations for immunotherapeutic purposes; diagnostic preparations for medical purposes’.

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 September 2007, the Opposition Division upheld the opposition and rejected the Community trade mark application, finding, in essence, that there was a likelihood of confusion between the mark applied for and the earlier mark.

9        On 30 October 2007, the applicant filed a notice of appeal with OHIM, under 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 28 August 2008 (‘the contested decision’), notified on 4 September 2008, the Fourth Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division.

11      In particular, the Board of Appeal found that the goods covered by the mark applied for were identical to the goods for which the earlier mark had been registered and that the signs at issue had a certain similarity visually (paragraph 21), a medium degree of similarity phonetically (paragraph 22) and were not comparable conceptually (paragraph 23). The Board of Appeal found that, when faced with the mark applied for, the relevant public, comprising medical professionals but also patients in the European Union (paragraph 17), might have an imperfect recollection of the earlier mark and, therefore, confuse those two marks. Consumers of pharmaceutical products would view the ending of the mark applied for as a ‘combining form’, which is frequently used in the marketing of those products, rather than an indication of origin. Consequently, the relevant public might believe that the goods in question originate from the same undertaking or economically linked undertakings (paragraph 24). The Board of Appeal concluded that a likelihood of confusion between the two marks at issue could not be ruled out (paragraph 25).

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      The intervener contends that the Court should dismiss the action.

 Law

15      In support of its action, the applicant relies on a plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94. First, it refers to its ‘submissions made in its [pleadings] dated December 27, 2006 and January 8, 2008’ concerning the absence of a likelihood of confusion in the present case. Secondly, it submits that the differences between the signs at issue are so considerable that there is no possibility of a likelihood of confusion between the marks in question.

 The applicant’s reference to its pleadings submitted before OHIM

16      Under Article 44(1) of the Rules of Procedure of the Court, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those Rules, applications must include a brief statement of the grounds relied on. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (Case T-183/03 Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) [2004] ECR II-3113, paragraph 11, and Joined Cases T-350/04 to T‑352/04 Bitburger Brauerei v OHIMAnheuser-Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II-4255, paragraph 33).

17      In the present case, the applicant refers, generally, to its ‘submissions made in its [pleadings] dated December 27, 2006 and January 8, 2008’, namely its pleadings lodged before the Opposition Division and before the Board of Appeal respectively, in the course of the procedure before OHIM.

18      Accordingly, having regard to the case-law cited in paragraph 16 above, that reference cannot be taken into consideration.

 Substance

19      Pursuant to 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.

20      It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and 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 designated (see Case T-162/01 Laboratorios RTB v OHIMGiorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

21      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 OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

22      As regards the relevant public in the present case, it should first be noted that the Board of Appeal found that the goods covered by the marks at issue were addressed to medical professionals and patients and that the relevant consumers were thus not only medical professionals but also the general public. The parties do not dispute that definition adopted by the Board of Appeal.

23      Secondly, it must be added that, while it is possible, having regard to the goods covered by the marks at issue, that the relevant public may pay greater attention, that degree of attention cannot be assumed with regard to all the pharmaceutical goods, as the Board of Appeal observed in paragraphs 18 and 25 of the contested decision. Those goods may encompass all sorts of pharmaceutical preparations, including products issued with or without prescription, general and specific products, and stronger or weak products. The parties do not dispute that assessment by the Board of Appeal. The applicant simply claims that, regardless of the degree of attentiveness of the relevant public, the strong dissimilarity between the signs at issue prevents any likelihood of confusion and OHIM contends that, even if the relevant public was of a very high degree of attentiveness, the outcome of the dispute would remain the same.

24      The fact that the goods covered by the signs at issue are identical is not called in question by the parties.

25      By contrast, the applicant disputes the findings of the Board of Appeal relating to the comparison of the signs at issue and to the existence of a likelihood of confusion in the present case.

 The comparison of the signs

26      According to settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited.)

27      In the present case, the Board of Appeal found that, visually, there was a certain similarity between the two word signs at issue, AVANZ and AVANZALENE, phonetically they were similar to a medium degree and, conceptually, no comparison was possible between them.

28      It should be observed at the outset that neither the applicant nor OHIM disputes that the signs at issue are not comparable conceptually. As the Board of Appeal found, the terms ‘avanzalene’ and ‘avanz’ have no particular meaning in relation to pharmaceutical goods.

29      The applicant concentrates its arguments on the visual and phonetic comparison of the signs carried out by the Board of Appeal. It states that, although the public usually pays more attention to the beginning of a sign, that does not apply where the signs show striking or conspicuous differences in their endings and those endings are prominent and eye-catching.

30      In its submission, several phonetic and visual differences between the signs in question cannot be overlooked. The applicant argues that the mark applied for, AVANZALENE, consists of 10 letters and is a long word sign with 4 or 5 syllables depending on the language used, for example English or German, whereas the earlier mark, AVANZ, consists of only 5 letters and is a short word sign with 2 syllables. It submits that the ending ‘alene’ attracts attention. At the hearing, in support of its arguments, the applicant produced the decision of the Third Board of Appeal of OHIM of 19 June 2002 (Case R-632/2001-3), relating to opposition proceedings between Avant International Srl and Peek and Cloppenburg KG. Since OHIM did not make any objection to the production of that decision, it was added to the file, formal notice of which was taken in the minutes of the hearing. That case concerned the trade marks AVANTIME and AVANT.

31      First, according to settled case-law, the decisions which the Boards of Appeal of OHIM are led to take under Regulation No 40/94, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on that of a previous decision‑making practice (Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 65, and Case T-346/04 Sadas v OHIM– LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 71).

32      The argument based on the decision of the Board of Appeal of 19 June 2002, referred to in paragraph 30 above, cannot therefore be accepted.

33      Next, visually, the Board of Appeal does not, as OHIM contends, seem to have made any error.

34      As the Board of Appeal rightly pointed out, the signs at issue share five letters, namely ‘a’, ‘v’, ‘a’, ‘n’ and ‘z’, in the same order. Those letters are contained in the first part of the trade mark applied for and make up the whole of the earlier mark. In addition, although the ending ‘alene’ of the trade mark applied for is specific to that mark and is not found in the earlier trade mark, it does not follow that the Board of Appeal erred in concluding that there was a certain similarity, visually, between the signs at issue. The Board of Appeal clearly took into account the beginning of the words which make up the two signs at issue, namely the first five letters, which are identical, and its analysis is consistent with the case-law in which it has repeatedly been held that the consumer generally pays greater attention to the beginning of a word mark than to the end (Joined Cases T‑183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia, Líneas Aéras de España (MUNDICOR) [2004] ECR II‑965, paragraph 83, and Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR  II‑2737, paragraph 51).

35      Lastly, phonetically, the Board of Appeal’s findings that the signs at issue are similar to a medium degree are also not vitiated by error. The fact that the first two syllables of the word signs at issue are the same will be perceived by the relevant public since, as OHIM correctly observes, the earlier trade mark is enunciated in full when the trade mark applied for is pronounced. In addition, the Board of Appeal was fully entitled to highlight the beginning of the words making up the word signs at issue and to consider the ending ‘alene’, which is present only in the trade mark applied for, to be insufficient to overcome the similarity between the signs. Those findings are not affected by the applicant’s general and wholly unsubstantiated statement that the ending ‘alene’ is not a commonly used diminutive.

36      Nor can they be challenged on the basis of Case T-66/03 ‘Drie Mollen sinds 1818’ v OHIMNabeiro Silveria (Galáxia) [2004] ECR II‑1765, in which it was held that the trade marks GALA and Galáxia were very different, in particular because of the ‘xia’ ending of the latter trade mark. At the hearing, the applicant relied on that judgment to claim that it is obvious that the signs AVANZ and AVANZALENE are different, in the same way as the signs GALA and Galáxia, since the ending ALENE consists of more letters than the ending ‘xia’. However, there are significant differences between the signs GALA and Galáxia visually and phonetically, as was observed in paragraphs 24 and 25 of Galáxia, and each of those signs also forms a distinct conceptual unit, as the Court observed in paragraph 27 of that judgment. That is not true of the signs AVANZ and AVANZALENE in the present case, which do not indeed have any meaning. The circumstances of Galáxia are therefore totally different from those of the present case and the applicant’s argument in this connection cannot be accepted.

37      It must therefore be concluded that the Board of Appeal was correct in finding that there was, visually, a certain similarity between the signs concerned and, phonetically, that they were similar to an average degree.

 The likelihood of confusion

38      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those 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).

39      In the present case, the Board of Appeal held, in paragraph 25 of the contested decision, that, taking into account the average distinctiveness of the earlier trade mark, and the visual similarity between the trade marks at issue coupled with their average phonetic similarity, and the fact that the goods concerned are identical, a likelihood of confusion between the trade marks could not be ruled out.

40      The Board of Appeal stated, in paragraph 24 of the contested decision, that the relevant public, when faced with the trade mark applied for, may have an imperfect recollection of the earlier mark and consequently confuse those two marks. Consumers of pharmaceutical goods would see in the ending of the trade mark applied for a ‘combining form’, which is frequently used in the marketing of those goods, rather than an indication of origin and, consequently, the relevant public might believe that the goods at issue come from the same undertaking or economically linked undertakings.

41      The applicant disputes that assessment, relying, first, on the argument that the two signs at issue are so different that there can be no likelihood of confusion. However, as has already been observed, the Board of Appeal correctly found that there was a certain visual similarity between the earlier mark and the trade mark applied for and an average degree of phonetic similarity between those marks.

42      The applicant states, secondly, that the ending ‘alene’ is not common and is an independent fanciful term which has a strong influence on the trade mark applied for.

43      However, not only are those arguments unsubstantiated by any evidence reliably demonstrating that that ending is fanciful and uncommon, but they do not give grounds for challenging the finding that the relevant public might believe that the goods at issue come from the same undertaking or economically linked undertakings, as the Board of Appeal found in paragraph 24 of the contested decision.

44      It is conceivable that the relevant public will think that the trade mark applied for is derived from the earlier mark and designates a specific range of pharmaceutical goods included in the wider range of goods covered by the earlier mark, since, as OHIM rightly points out, pharmaceutical undertakings often produce a number of medicines and the scope of their business generally extends beyond the treatment of a single health disorder.

45      The Board of Appeal therefore did not err in holding that a likelihood of confusion between the marks at issue cannot be ruled out.

46      It follows from the foregoing considerations that the applicant’s single plea, alleging the infringement of Article 8(1)(b) of Regulation No 40/94, must be rejected, and the action in its entirety must be dismissed.

 Costs

47      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by OHIM, in accordance with the form of order sought by the latter.

48      As the intervener has not applied for costs, it must bear its own costs.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action.

2.      Orders Mundipharma AG to pay the costs, except those incurred by ALK-Abelló A/S.

3.      Orders ALK-Abelló to bear its own costs.

Delivered in open court in Luxembourg on 4 March 2010.

[Signatures]