Opko Ireland Global Holdings v EUIPO - Teva Pharmaceutical Industries (ALPHAREN) (Judgment) [2017] EUECJ T-88/16 (26 January 2017)

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(EU trade mark — Opposition proceedings — Application for EU word mark ALPHAREN — Earlier national word marks ALPHA D3 — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Consideration of new evidence by the Board of Appeal following a judgment annulling a decision — Article 76(2) of Regulation No 207/2009)

Opko Ireland Global Holdings Ltd, established in Dublin (Ireland), represented by S. Malynicz QC, A. Smith and D. Meale, Solicitors,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 December 2015 (Case R 2387/2014-5), relating to opposition proceedings between Teva Pharmaceutical Industries and Opko Ireland Global Holdings,

composed of D. Gratsias, President, I. Labucka (Rapporteur) and I. Ulloa Rubio, Judges,

having regard to the application lodged at the Court Registry on 26 February 2016,

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

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 3 March 2005, Ineos Healthcare Ltd, the predecessor in law to the applicant, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 European Union trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, 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 containing magnesium iron hydroxycarbonate 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 EU 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 other party to the proceedings before the Board of Appeal (‘the opponent’), 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 mark applied for in respect of the goods referred to in paragraph 3 above.

– the Hungarian word mark ALPHA D3 registered under No 134 972 and designating goods in Class 5 corresponding to the following description: ‘pharmaceutical preparation for regulating calcium’;

– the Lithuanian word mark ALPHA D3 registered under No 20 613 and designating goods in Class 5 corresponding to the following description: ‘pharmaceutical preparation being a calcium regulator’;

– the Latvian word mark ALPHA D3 registered under Ref M30 407 and designating goods in Class 5 corresponding to the following description: ‘pharmaceutical preparation being a calcium regulator’.

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, Ineos Healthcare filed a notice of appeal with EUIPO under 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 decision of 2009’), the Second Board of Appeal of EUIPO dismissed the appeal. It held, in particular, that the earlier Hungarian trade mark could not be taken into consideration because there was no translation of the registration certificate into the language of the proceedings. According to the Board of Appeal, the fact that the opposition had been upheld solely on the basis of the earlier Hungarian trade mark was enough in itself to justify annulment of the Opposition Division’s decision. Nevertheless, taking the view that a decision with the same operative part as that of the Opposition Division could be adopted at the time of the decision regarding the appeal, the Board of Appeal examined the other trade 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 showed a certain degree of visual, phonetic and conceptual similarity. Likewise, 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 part of the relevant public and is more susceptible to such confusion because he does not have the same level of knowledge and ability in biochemistry and pharmacology as professionals in those fields.

11 On 1 June 2009, Ineos Healthcare brought an action before the General Court against the decision of 2009, which was registered as Case T‑222/09. In support of its action, it put forward four pleas in law, alleging, first, a failure by the opponent to adduce evidence of similarity between the goods, second, infringement of Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009), third, infringement of Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009) and, fourth, infringement of Article 8(1)(b) of Regulation No 40/94.

12 By judgment of 9 February 2011, Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN) (T‑222/09, EU:T:2011:36), the General Court upheld the action in part and annulled the decision of 2009 with regard to the goods in the following categories: ‘pharmaceutical and veterinary preparations containing magnesium iron hydroxycarbonate or hydrotalcite or derivatives of these compounds’ (‘the Category A goods’) and ‘phosphate binders for use in the treatment of hyperphosphataemia’ (‘the Category C goods’). The Court found, in particular, that, by relying on internet search results carried out of its own motion in order to find a similarity between, on the one hand, the Category A goods and the Category C goods and, on the other, the goods covered by the earlier Latvian and Lithuanian trade marks, the Board of Appeal had acted in breach of its obligation, under Article 76(1) of Regulation No 207/2009, to confine its examination to the facts, evidence and arguments provided by the parties. The action was dismissed as to the remainder.

13 By decision of 16 June 2011, the Presidium of the Boards of Appeal of EUIPO remitted the case to the First Board of Appeal so that it could give a new decision, in accordance with Article 65(6) of Regulation No 207/2009.

14 On 23 September 2011, the rights attached to the application were transferred to Cytochroma Development, Inc., the predecessor in law to the applicant.

15 By decision of 2 December 2011 (‘the decision of 2011’), the First Board of Appeal of EUIPO rejected the application for an EU trade mark in respect of the Category A goods and the Category C goods and dismissed the appeal against the Opposition Division’s decision. It found, in particular, that there was a likelihood of confusion between the marks in question. In order to find that the goods covered by the marks in question were closely linked and complementary, it relied on evidence submitted by the parties in the proceedings which had given rise to the decision of 2009 and on evidence adduced by the opponent in response to the communication of the Board of Appeal following the partial annulment of the decision of 2009.

16 On 29 February 2012, Cytochroma Development brought an action before the Court against the decision of 2011, which was registered as Case T‑106/12. In support of its action, it relied on four pleas in law, alleging, first, infringement of Article 1(d)(2) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 1), as amended, second, infringement of Article 65(6) of Regulation No 207/2009 and Article 1(d)(1) of Regulation No 216/96, third, infringement of Article 76(1) of Regulation No 207/2009, and, fourth, infringement of the principle of legal certainty and the Charter of Fundamental Rights of the European Union (OJ 2010 C 83, p. 389).

17 By judgment of 3 July 2013, Cytochroma Development v OHIM — Teva Pharmaceutical Industries (ALPHAREN) (T‑106/12, not published, EU:T:2013:340), the Court upheld the action and annulled the decision of 2011. In particular, the Court upheld the first plea in law, considering that the Board of Appeal had infringed Article 1(d)(2) of Regulation No 216/96 given that M. Bra, who had been a member of the Board of Appeal which had adopted the decision of 2009 as partially annulled by judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), had also been part of the Board of Appeal which had adopted the decision of 2011. The Court rejected the applicant’s other pleas in law.

18 On 12 September 2013, Cytochroma Development lodged an appeal with the Court of Justice against the judgment of 3 July 2013, ALPHAREN, T‑106/12, not published, EU:T:2013:340.

19 By order of 17 July 2014, Cytochroma Development v OHIM (C‑490/13 P, not published, EU:C:2014:2122), the Court of Justice dismissed the appeal brought by Cytochroma Development as being manifestly inadmissible under Article 181 of its Rules of Procedure.

20 By decision of 16 September 2014, the Presidium of the Boards of Appeal remitted the case to the Fifth Board of Appeal, composed of G. Humphreys, A. Pohlmann and A. Szanyi Felkl.

21 By decision of 26 November 2014 (‘the decision of 2014’), the Fifth Board of Appeal dismissed the appeal against the Opposition Division’s decision.

22 On 23 February 2015, the EU trade mark application was transferred to the applicant, Opko Ireland Global Holdings Ltd.

23 On 25 February 2015, the applicant brought an action before the Court against the decision of 2014, which was registered as Case T‑106/15.

24 On 12 June 2015, having found that Mr Humphreys had been a member of the Second Board of Appeal which had adopted the decision of 2009, the Fifth Board of Appeal revoked the decision of 2014.

25 Following the revocation of the decision of 2014, the General Court, by order of 16 July 2015, Opko Ireland Global Holdings v OHIM — Teva Pharmaceutical Industries (ALPHAREN) (T‑106/15, not published, EU:T:2015:547), found that there was no longer any need to adjudicate on the case brought by the applicant.

26 Following the order of the General Court, the Presidium of the Boards of Appeal remitted the case to the Fifth Board of Appeal, composed of D. Schennen, Mr Pohlmann and Ms Szanyi Felkl.

27 By decision of 16 December 2015 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal and ordered the applicant to pay the costs. In essence, it considered that there was a likelihood of confusion between the marks at issue for the Category A goods and the Category C goods. More specifically, the Board of Appeal held, first, that the relevant public was composed of Lithuanian and Latvian health professionals and average consumers and that that public had a high level of attention, second, that the goods in question were highly similar in so far as they were medicinal products intended for patients suffering from kidney disease, and, third, that the signs in question were weakly similar visually and had some phonetic and conceptual similarities. Concerning the distinctive character of the element ‘alpha’, the Board of Appeal considered, in essence, that, for the average consumer who did not have the same level of expertise in biochemistry and pharmacology as a professional, that element would not have weak distinctive character.

30 In support of its action, the applicant raises four pleas in law, alleging, first, infringement of Article 1(d)(2) of Regulation No 216/96, second, infringement of Rule 50 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), third, infringement of the rules regarding the burden of proof in relation to the similarity of the goods, and, fourth, infringement of Article 8(1)(b) of Regulation No 207/2009.

First ground of appeal: infringement of Article 1(d)(2) of Regulation No 216/96

31 The applicant submits that EUIPO infringed Article 1(d)(2) of Regulation No 216/96 in so far as two of the members of the Fifth Board of Appeal which adopted the decision of 2014 were also part of the Board of Appeal which adopted the contested decision. It argues, in essence, that the membership of the Board of Appeal responsible for re-examining a decision of another Board of Appeal should not include any of the members who adopted the earlier decision.

33 Under Article 1(d)(1) of Regulation No 216/96, as amended, if, pursuant to Article 65(6) of Regulation No 207/2009, the measures necessary to comply with a judgment of the Court of Justice annulling all or part of a decision of a Board of Appeal or of the Grand Board include re-examination by the Boards of Appeal of the case which was the subject of that decision, the Presidium is to decide if the case is to be remitted to the Board which adopted that decision, or to another Board, or to the Grand Board.

34 It is stated in Article 1(d)(2) of that regulation that, if the case is remitted to another Board, that Board is not to comprise members who were party to the contested decision, but that that provision is not to apply if the case is remitted to the Grand Board.

35 As is apparent from paragraph 33 above, Article 1(d)(1) and (2) of Regulation No 216/96 are not to apply unless EUIPO is required to take the measures necessary to comply with a judgment of the Court of Justice pursuant to Article 65(6) of Regulation No 207/2009. It must be found that, in the present case, the decision of 2014 which was the subject of an action before the General Court was not annulled by the Court ‘of its own motion’ as the applicant claims but was revoked, pursuant to Article 80 of Regulation No 207/2009, by the Board of Appeal which had adopted it. The revocation of a decision of EUIPO pursuant to Article 80 of Regulation No 207/2009 cannot be regarded as an annulment of that decision by the General Court or the Court of Justice. Moreover, it should be added that, under Article 80(3) of Regulation No 207/2009, that article is to be without prejudice to the right of the parties to submit an appeal to the Court under Article 65 of that regulation.

36 Since Article 1(d) of Regulation No 216/96 is not applicable in the present case, the present plea in law is manifestly unfounded.

37 Furthermore, it should be noted that none of the members of the Fifth Board of Appeal which adopted the contested decision was part of the First or the Second Board of Appeal which adopted the decisions of 2009 and 2011 which were annulled, in part and in full respectively, by the General Court in its judgments of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), and of 3 July 2013, ALPHAREN (T‑106/12, not published, EU:T:2013:340).

38 Similarly, the applicant’s argument that the contested decision is not independent from the decision of 2014 by reason of the fact that, apart from a few additional paragraphs, the contested decision reproduces the decision of 2014 verbatim, must be rejected as manifestly unfounded. It should be noted that the mere fact that the content of the contested decision is almost identical to that of the decision of 2014 is not, in itself, capable of establishing a lack of independence on the part of the members of the Board of Appeal. Moreover, the applicant does not put forward any other evidence capable of calling that independence in question.

39 By its second plea in law, the applicant complains that the Board of Appeal took into account new evidence which was not submitted during the initial opposition proceedings, thereby infringing the third subparagraph of Rule 50(1) of Regulation No 2868/95.

40 It considers, in essence, that the opponent had an obligation to provide substantial evidence relating to the similarity of the goods in question within the periods prescribed by the Opposition Division and that, in the present case, the circumstances of the case did not justify taking into account evidence filed more than five years after the expiry of the initial deadline. Relying on the judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638), the applicant argues that, in the circumstances of the present case, regarding new evidence, the Board of Appeal’s discretion had to be exercised restrictively, given that the opponent ‘was aware ... of the precise documents’ that had to be produced in support of the opposition.

42 It is apparent from the third subparagraph of Rule 50(1) of Regulation No 2868/95 that, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division in accordance with Regulation No 207/2009 and those Rules, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009.

43 Under Article 76(2) of Regulation No 207/2009, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

44 In the present case, by letter of 7 April 2006, EUIPO, pursuant to Rule 19(1) of Regulation No 2868/95, invited the opponent to provide, before 8 August 2006, the facts, evidence and arguments in support of its opposition, or to complete those on the opposition form. On 18 July 2006, the opponent presented additional arguments.

45 Following the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), partially annulling the decision of 2009, the First Board of Appeal, by communication of the rapporteur of 18 July 2011, invited the parties to file further observations and evidence regarding the Category A goods and the Category C goods. On 18 August 2011, the opponent filed observations regarding the nature, properties and interactions of the goods in question, substantiating those observations with documentary evidence. The applicant, for its part, in its observations of 18 August and 23 September 2011, refrained from taking a position on the rapporteur’s communication or on the evidence submitted by the opponent.

46 In that regard, it should be noted, as is apparent from paragraph 42 above, that the third subparagraph of Rule 50(1) of Regulation No 2868/95 expressly refers to the possibility provided in Article 76(2) of Regulation No 207/2009 for EUIPO to disregard evidence that has not been submitted in due time.

47 As was recalled in, inter alia, the judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638, paragraph 23 and the case-law cited), relied on by the applicant, in stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 76(2) of Regulation No 207/2009 grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take that evidence into account.

48 It must be found that, in the present case, EUIPO exercised its discretion in so far as it invited the parties to provide additional evidence having regard in particular to the Court’s points of criticism in its judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36). It is therefore necessary to ascertain whether, in the present case, EUIPO has infringed Article 76(2) of Regulation No 207/2009.

49 In that regard, it should be borne in mind that, as is apparent from settled case-law, where EUIPO is called upon to give a decision in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see judgment of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).

50 That was the situation in the present case. First, the Board of Appeal needed the evidence submitted in order to fulfil its obligation regarding the assessment of the similarity of the goods. That evidence was therefore, by definition, necessarily relevant. Second, the stage of the proceedings and the circumstances did not argue against the evidence being taken into account. Indeed, that evidence was submitted following the annulment of the decision of 2009 by judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), on the ground that the Board of Appeal had relied on evidence not adduced by the parties which could not be regarded as well-known facts. Consequently, at that stage of the proceedings and taking that ground into account, it was for the Board of Appeal, in the context of a further examination of the opposition, to question the parties regarding the issue of the similarity of the goods, as the evidence which they had already submitted in that regard was insufficient.

51 Regarding the applicant’s assertion that the Board of Appeal’s discretion should have been exercised restrictively, it should be noted that such an approach cannot be upheld. It is true that, in paragraph 39 of the judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638), the Court of Justice held that, in the circumstances of that case, the Board of Appeal had to exercise its discretion restrictively and could allow the late submission of such evidence only if the surrounding circumstances were likely to justify the appellant’s delay in the submission of proof required of him. However, according to that Court, the limited discretion available to the Board of Appeal in the case giving rise to the judgment of 3 October 2013, Rintisch v OHIM (C‑120/12 P, EU:C:2013:638), concerned the acceptance of evidence relating to the existence of earlier rights which the opponent was required to provide within the prescribed period under Rule 19 of Regulation No 2868/95. In the present case, by contrast, the additional evidence which the opponent has submitted relates to the similarity of the goods covered by the marks in question and, as is apparent from paragraph 22 of the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), the opponent was under no obligation to provide such evidence. Accordingly, the situations in the two cases are not comparable. Moreover, as has already been stated, in the present case, it is the Board of Appeal which, following the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), asked the applicant and the opponent to provide new evidence concerning the Category A goods and the Category C goods.

52 Furthermore, it must be observed that, were the applicant’s interpretation to be followed, the possibility for the Board of Appeal to exercise its powers pursuant to Article 64(1) of Regulation No 207/2009 would be limited. Similarly, its power to invite the parties, as often as necessary, to file observations on communications from the other parties or issued by itself under Article 63(2) of that regulation would also be unduly restricted.

53 Having regard to all of the foregoing, the present plea in law must be rejected.

Third plea in law: infringement of the rules regarding the burden of proof in relation to the similarity of the goods in question

54 In its third plea in law, the applicant complains that the Board of Appeal infringed the rules regarding the allocation of the burden of proof. It argues that, in opposition proceedings, the burden of proof of similarity of goods lies with the opponent. However, in the present case, according to the applicant, the evidence provided by the opponent was insufficient, and EUIPO erred in law in its allocation of the burden of proof.

55 Similarly, the applicant considers that the General Court’s analysis of that plea, set out in paragraph 20 of the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), is incorrect and is contrary to the case-law of the Court of Justice.

56 EUIPO contends that the present plea in law is inadmissible given that the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), which rejected that plea, has become res judicata. Even if the plea is not regarded as inadmissible, it should be declared unfounded.

57 First of all, it should be borne in mind that, in paragraphs 16 to 22 of the judgment of 9 February 2011, ALPHAREN (T‑222/09, EU:T:2011:36), the Court rejected the plea, invoked by the predecessor in law to the applicant, Ineos Healthcare, alleging that the opponent had failed to adduce evidence of the similarity of the goods.

58 In that regard, as was found by the Court, it follows from a combined reading of Rules 15, 18 and 19 of Regulation No 2868/95 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. It concluded that there was no obligation on the opposing party, in opposition proceedings, to adduce evidence in relation to the similarity of the goods at issue (judgment of 9 February 2011, ALPHAREN, T‑222/09, EU:T:2011:36, paragraphs 17 and 22).

59 Regarding, next, the applicant’s argument based on the order of 9 March 2007, Alecansan v OHIM (C‑196/06 P, not published, EU:C:2007:159, paragraph 24), claiming that it is necessary for evidence to be provided of the similarity of the goods or services concerned, it must be pointed out that, contrary to the applicant’s assertions, the Court of Justice, in its order, did not make any ruling regarding the question of the burden of proof allegedly lying with the opponent in opposition proceedings. In paragraph 24 of that order, the Court merely highlighted the requirement to establish, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, similarity between the goods even where the signs are identical (judgment of 9 February 2011, ALPHAREN, T‑222/09, EU:T:2011:36, paragraph 20).

60 The same is true of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442) in which, in paragraph 22, the Court merely stated that the existence of a likelihood of confusion presupposed, inter alia, that the goods or services covered were identical or similar and that it was necessary to adduce evidence to that effect. It can in no way be inferred from that judgment that that obligation lies with the opponent.

61 It follows that the present plea in law is manifestly lacking any foundation in law and must be rejected without there being any need to examine its admissibility. By the same token, there is no need to examine the merits of the arguments relating to the probative value of the evidence which the opponent submitted to EUIPO, given that, as is apparent from paragraph 69 of the application, the applicant has developed those arguments only on the basis that the opponent is required to bear the burden of proof.

62 By its fourth plea in law, the applicant disputes the findings of the Board of Appeal relating to the existence of a likelihood of confusion between the marks at issue. In particular, it disputes the Board of Appeal’s findings relating to (i) the relevant public and its level of attention and (ii) the similarity of the signs.

64 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)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

65 According to settled case-law, the risk that the public may 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 goods or services in question 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

66 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 judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

67 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

68 The present plea in law must be examined in the light of the abovementioned principles.

69 Regarding the relevant public, the Board of Appeal considered, in essence, that that public comprised Latvian and Lithuanian health professionals and average consumers. It explained that the relevant average consumers, namely patients suffering from kidney disease, were deemed to be reasonably well informed and reasonably observant and circumspect, but that their level of sophistication and knowledge could not be compared to that of a doctor or pharmacist.

70 The applicant complains that the Board of Appeal considered that the relevant public included average consumers not having the same level of attention as professionals and that the goods in question were also available to the public in pharmacies without prescription.

71 In that regard, it should be borne in mind that, according to settled case-law, where the goods in question are medicinal products, the relevant public is composed of medical professionals, on the one hand, and patients, as end-consumers of those goods, on the other (see judgment of 21 October 2008, Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, not published, EU:T:2008:455, paragraph 27 and the case-law cited).

72 Moreover, it was held by the Court of Justice that, even in a situation where the goods in question were medicinal products requiring a doctor’s prescription prior to their sale to end-users in pharmacies, the relevant public was composed not only of end-users, but also of professionals, that is, doctors who prescribe the medicinal product and pharmacists who sell that prescribed product (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraphs 52 and 63).

73 As regards the relevant public’s level of attention, it is apparent from case-law that medical professionals have a high degree of attentiveness when prescribing medicinal products. Moreover, with regard to end-users, it is apparent from case-law that, in cases where pharmaceutical preparations are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect since those goods affect their state of health, and that those consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical preparations. Thus medicinal products, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (see judgment of 15 December 2010, Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, EU:T:2010:520, paragraph 26 and the case-law cited).

74 Accordingly, the Board of Appeal did not err in considering that, in the present case, the relevant public comprised both Latvian and Lithuanian health professionals and relevant average consumers, namely patients suffering from kidney disease, having a high level of attention.

75 Furthermore, it should be noted that the applicant’s line of argument contains a clear contradiction. On the one hand, it criticises EUIPO’s taking into account the patient information leaflet submitted by the opponent during the administrative proceedings and, on the other hand, it relies on that same item of evidence in order to argue that the goods covered by the earlier trade marks are only available on prescription.

76 In any event, it should be emphasised that, in order to assess whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the description of the goods covered by the marks at issue must be taken into account, and not the goods actually marketed under those marks (see, to that effect, judgments of 16 June 2010, Kureha v OHIM — Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71, and of 17 January 2012, Kitzinger v OHIM — Mitteldeutscher Rundfunk and Zweites Deutsches Fernsehen (KICO), T‑249/10, not published, EU:T:2012:7, paragraph 23).

77 In the present case, the list of goods covered by the marks in question does not contain any reference as to the way in which they are to be marketed. Accordingly, the applicant’s argument, which, as EUIPO contends, relates to the goods as they might currently be marketed, must be rejected.

78 Regarding the comparison of the goods in question, the Board of Appeal considered, after a highly detailed analysis, that the Category A goods and the Category C goods covered by the mark applied for and the pharmaceutical preparations for regulating calcium covered by the earlier trade marks were intended for patients suffering from kidney disease who could take them simultaneously or successively in order to treat various health problems linked to kidney dysfunctions. It concluded, in paragraph 78 of the contested decision, that those goods were highly similar. In the same vein, the Board of Appeal noted, in paragraph 80 of the contested decision, that that reasoning also applied to goods specifically intended for veterinary use, given that those goods could also be purchased in pharmacies and that pharmaceutical preparations for human use were often administered, in different doses, to animals.

79 It is apparent from case-law, regarding pharmaceutical preparations such as those at issue in the present case, that they have the same nature (pharmaceutical preparations), purpose or intended use (treatment of human health problems), consumers (medical professionals and patients) and distribution channels (typically pharmacies). This finding follows from the goods at issue belonging to the same general category of goods, namely medicinal products. However, this is a very wide category and includes goods which may be different. Thus it must be concluded that the fact that medicinal products belong to the same general category of goods only allows the finding of a low degree of similarity between all medicinal products (judgment of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 35).

80 As those factors cannot be used to distinguish different subcategories of medicinal products, it is necessary to have regard to other factors, in order to properly assess the similarity between medicinal products such as the goods in question. Those factors are, in particular, whether those products are in competition with each other or complementary, as well as their purpose and their specific intended use (treatment of specific health problems). In taking those factors into account, a medicinal product’s therapeutic indication is of decisive importance (see, to that effect, judgment of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 36).

81 Furthermore, the specific nature of medicinal products has already been taken into account in the case-law which states that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose of the relevant goods or services is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services. The purpose and intended use of a therapeutic product are expressed in its therapeutic indication (see judgment of 15 December 2010, TOLPOSAN, T‑331/09, EU:T:2010:520, paragraph 37 and the case-law cited).

82 In the present case, as is apparent from the analysis carried out by the Board of Appeal, the pharmaceutical preparations covered by the marks at issue (see paragraph 78 above) are intended for patients suffering from chronic kidney failure, who may take them simultaneously or successively in order to treat various health problems linked to kidney dysfunctions. Accordingly, they have the same therapeutic indication. Therefore, having regard to the case-law cited in paragraphs 79 to 81 above, the Board of Appeal was fully entitled to consider that the goods in question were highly similar.

83 Without directly challenging those findings of the Board of Appeal, the applicant has criticised, in its third plea in law, the taking into account, by the Board of Appeal, of the various items of evidence which led it to consider that the goods in question were similar. It claims, inter alia, that in paragraphs 73 and 74 of the contested decision the Board of Appeal played the role of medical expert, since the facts and matters set out therein are not within the ordinary knowledge of members of the Board of Appeal.

84 Regarding the evidence submitted by the opponent following the invitation from the rapporteur, it should be borne in mind, as is apparent from paragraphs 48 to 53 above, that the Board of Appeal was entitled to take account of the evidence submitted late by the opponent. Any argument based on the inadmissibility of that evidence must therefore be rejected.

85 As regards the patient information leaflet submitted by the opponent during the administrative proceedings, which the applicant describes as ‘a flimsy piece of evidence’, it should be noted that it was not the only source of information enabling the Board of Appeal to find that the pharmaceutical preparations for regulating calcium were used in, inter alia, the treatment of bone disorders linked to kidney failure. Indeed, as is apparent from, in particular, paragraph 68 of the contested decision, the information contained in the patient information leaflet was confirmed by the description of the product ALFA D3 filed by the applicant during the administrative proceedings.

86 Regarding the applicant’s argument, based on that leaflet, that the goods in question are dissimilar owing to the fact that they should not be taken together, it should be noted, as has been stated in paragraph 82 above, that the Board of Appeal was fully entitled to consider that the goods in question were highly similar, given that they were all intended for patients suffering from chronic kidney failure. That conclusion cannot be called in question by the fact that it is not recommended to take those products together.

87 Regarding the criticism levelled against the Board of Appeal by the applicant that the former played the role of medical expert, it should be noted that, pursuant to Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. As is apparent from the contested decision, when assessing the similarity of the goods, the Board of Appeal relied on the evidence submitted by the parties. Furthermore, it relied on evidence which was not contested by the applicant.

89 The global assessment of the likelihood of confusion must, so far as concerns 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 elements. 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 engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

90 In the present case, the mark applied for consists of the word sign ALPHAREN whereas the earlier Latvian and Lithuanian trade marks consist of the word sign ALPHA D3.

91 Regarding the visual comparison of the signs in question, the Board of Appeal considered in paragraph 89 of the contested decision that the signs in question coincided as to their first word element ‘alpha’, which counterbalanced the differences between the signs. It concluded that, visually, the signs in question were similar to a low degree.

92 The applicant submits that the Board of Appeal’s analysis is incorrect in so far as it finds that the significant differences between the signs will be counterbalanced by the coincidence of the element ‘alpha’.

93 That line of argument cannot be accepted. In so far as the two signs in question share the element ‘alpha’ which is not devoid of distinctive character in relation to the goods in question in the eyes of the average consumer (see paragraph 104 below), but differ as to their other elements, namely ‘ren’ for the sign constituting the mark applied for and ‘d3’ for the signs constituting the earlier trade marks, it is not possible to rule out any similarity between those signs. It is therefore necessary to uphold the Board of Appeal’s conclusion that they are similar to a low degree.

94 Regarding the phonetic comparison of the signs, the Board of Appeal observed, in essence, that the sign forming the mark applied for was pronounced in three syllables: ‘al’, ‘fa’ and ‘ren’, whereas those forming the earlier trade marks were pronounced in four syllables: ‘al’, ‘fa’, ‘de’ and ‘tris’. It concluded that the identity of the first two syllables gave the signs in question a certain degree of phonetic similarity.

96 In that regard, it should be pointed out that, besides the fact that the applicant’s claims regarding the phonetic similarity are unsubstantiated, those claims are also wholly unfounded. As is apparent from the Board of Appeal’s analysis (see paragraph 94 above), the signs in question are identical as to their first two syllables, although they consist of three and four syllables respectively. Accordingly, there is a certain phonetic similarity.

97 Regarding the conceptual comparison of the signs, the Board of Appeal began by noting that the health professionals of Latvia and Lithuania, namely doctors and pharmacists, will understand all of the elements forming the signs in question. Thus, the element ‘alpha’ will be understood as a biochemical term designating the position of functional groups within molecules, the element ‘d3’ will be understood as a reference to Vitamin D, and the element ‘ren’ will be understood as coming from the English word ‘renal’, that is, related to the kidney. The Board of Appeal then considered that the average consumer did not have the same level of knowledge and expertise in pharmacology as health professionals. According to the Board of Appeal, average Latvian and Lithuanian consumers will recognise the element ‘alpha’ as a reference to the first letter of the Greek alphabet and the element ‘d3’ as a descriptive reference to a form of Vitamin D. The element ‘ren’ included in the mark applied for will have no meaning for the Latvian or Lithuanian public.

98 The Board of Appeal also considered that the element ‘alpha’ will not be perceived as having any direct and specific link with the pharmaceutical preparations in question and will be deemed fanciful. It concluded that there was a certain degree of conceptual similarity between the signs in question.

99 The applicant claims that the Board of Appeal’s analysis that there is a certain degree of conceptual similarity as a result of the presence of the element ‘alpha’ in the signs in question and notwithstanding its own finding that that element lacked distinctive character is incorrect.

100 First of all, it should be noted that, contrary to the applicant’s assertions, the Board of Appeal did not consider that the element ‘alpha’ was devoid of distinctive character. It considered that it was not distinctive only for health professionals. However, the relevant public in the present case consists of both professionals and average consumers (see paragraph 74 above). Furthermore, the Board of Appeal expressly stated, in paragraphs 86 and 91 of the contested decision, that the element ‘alpha’ will not be perceived as having a direct link with the pharmaceutical preparations and that it will be deemed fanciful by the average consumer.

101 Regarding, next, the possibility that the element ‘alpha’ may have weak distinctive character, it should be borne in mind that, for the purpose of assessing the distinctive character of an element of a mark, it is necessary to examine the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).

102 According to settled case-law, a term which has a clear meaning is not to be regarded as descriptive unless there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraphs 24 and 25 and the case-law cited).

103 Moreover, the conceptual perception of a word element of a trade mark may vary between medical professionals and patients (judgment of 9 April 2014, Farmaceutisk Laboratorium Ferring v OHIM — Tillotts Pharma (OCTASA), T‑501/12, not published, EU:T:2014:194, paragraph 37).

104 In the present case, as is apparent from the Board of Appeal’s analysis as recalled in paragraph 97 above, the average consumer will understand the element ‘alpha’ as a reference to the first letter of the Greek alphabet and not as a biochemical term. That element will not create any specific link with the goods in question on the part of the average consumer, so that it cannot be regarded as having a weak distinctive character. It follows that the signs in question must be compared in their entirety.

105 For the sake of completeness, it should be borne in mind that the weak distinctive character of an element of a composite mark does not necessarily mean that that element cannot constitute a dominant element where, owing to, for example, its position in the sign or its size, it is capable of making an impression on consumers and being remembered by them (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited).

106 Lastly, regarding the conceptual comparison of the signs, the Board of Appeal in no way erred in considering that there was a certain degree of conceptual similarity between the signs in question for the average consumer. The average consumer will understand the element ‘alpha’ as a reference to the first letter of the Greek alphabet, while he will understand the element ‘d3’ as a reference to a form of Vitamin D.

107 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 those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

108 In the present case, in paragraphs 93 and 96 of the contested decision the Board of Appeal held that there was a likelihood of confusion for the relevant average consumers, namely patients suffering from kidney disease. It considered, inter alia, that, notwithstanding the relevant average consumers’ higher-than-average level of attention, the coincidence of the initial element ‘alpha’ had a significant impact on the perception of the marks in question on the part of those consumers. By contrast, the Board of Appeal found, in essence, that there was no likelihood of confusion for the health professionals of Latvia and Lithuania (see paragraph 85 of the contested decision).

109 The applicant argues, inter alia, that, taking into account the lack of proved similarity between the goods, the differences between the marks, and the circumstances in which the goods in question were likely to be sold to professionals and average consumers, there was no genuine and properly substantiated basis for a finding of a likelihood of confusion.

110 It must be pointed out that the applicant’s assertions are based on the incorrect premiss that the similarity of the goods in question has not been proved. However, as is apparent from the analysis above, the Board of Appeal was fully entitled to consider that the goods covered by the marks at issue were highly similar (see paragraph 82 above). Similarly, there is a weak visual similarity and a certain phonetic and conceptual similarity between the signs in question. It follows that the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks in question on the part of average Latvian and Lithuanian consumers with a high level of attention.

111 In that regard, the applicant complains, in essence, that the Board of Appeal failed to take sufficient account, in its assessment of the likelihood of confusion, of the average consumer’s level of attention.

112 However, that assertion is manifestly unfounded. The Board of Appeal not only observed that the relevant public’s level of attention was higher than average (see paragraph 69 above), but also recalled that fact when assessing the likelihood of confusion (see paragraph 93 of the contested decision), although it considered that that high level of attention did not mean that there was no likelihood of confusion. In addition, it stated, in essence, in paragraph 92 of the contested decision that, notwithstanding the average consumer’s high level of attention, his level of sophistication and knowledge could not be compared to that of a doctor or pharmacist.

113 Having regard to all of the foregoing, the present plea in law must be rejected and the action must be dismissed in its entirety.

114 Under Article 134(1) 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.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Opko Ireland Global Holdings v EUIPO - Teva Pharmaceutical Industries (ALPHAREN) (Judgment) [2017] EUECJ T-88/16 (26 January 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T8816.html Cite as: EU:T:2017:32, ECLI:EU:T:2017:32, [2017] EUECJ T-88/16

Court of Justice of the European Communities (including Court of First Instance Decisions)