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

(Appeals Community trade mark Regulation (EC) No 40/94 Article 8(1)(b) Relative ground for refusal of registration Likelihood of confusion Article 43(2) and (3) Genuine use New plea Word mark 'TRAVATAN' Opposition by proprietor of earlier national trade mark 'TRIVASTAN')

In Case C-412/05 P,

APPEAL pursuant to Article 56 of the Statute of the Court of Justice, brought on 23 November 2005,

Alcon Inc., established in Hünenberg (Switzerland), represented by G. Breen, solicitor, and J. Gleeson SC, with an address for service in Luxembourg,

applicant,

the other parties to the proceedings being:

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

defendant at first instance,

Biofarma SA, established in Neuilly'sur'Seine (France), represented by V. Gil Vega and A. Ruiz López, abogados,

intervener at first instance,

composed of A. Rosas, President of the Chamber, A. Tizzano, A. Borg Barthet, J. Malenovský and A. à Caoimh (Rapporteur), Judges,

Advocate General: J. Kokott,

Registrar: J. Swedenborg, Administrator,

having regard to the written procedure and further to the hearing on 27 September 2006,

after hearing the Opinion of the Advocate General at the sitting on 26 October 2006,

gives the following

1. By its appeal, Alcon Inc. seeks the annulment of the judgment of the Court of First Instance of the European Communities in Case T-130/03 Alcon v OHIM Biofarma (TRAVATAN) [2005] II'3859 ('the judgment under appeal'), by which that court dismissed its appeal for annulment of the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 January 2003 (Case R 968/2001-3), refusing to register the word sign 'TRAVATAN' as a Community Trade Mark ('the contested decision').

Legal context

2. The first subparagraph of Article 48(2) of the Rules of Procedure of the Court of First Instance provides that 'no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure'.
3. Pursuant to Article 135(4) of those Rules, 'the parties' pleadings may not change the subject-matter of the proceedings before the Board of Appeal'.
4. Article 8(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides:

'1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) 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.'

5. Article 8(2)(a)(ii) of that regulation is worded as follows:

'for the purposes of paragraph 1, 'Earlier trade marks' means;

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

...

(ii) trade marks registered in a Member State ...'.

6. Article 43(2) and (3) of the same regulation provides:

'2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.'

7. According to Article 44(1) of that Regulation, the applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein.
8. Article 63(1) to (3) of Regulation No 40/94 provides as follows:

'1. Actions may be brought before the Court of [First Instance] against decisions of the Boards of Appeal on appeals.

2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.

3. The Court of [First Instance] has jurisdiction to annul or to alter the contested decision.'

9. Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), lists, in Rule 13(1) thereof, the information that an application for amendment of the application under Article 44 of that latter Regulation must contain.

Background to the dispute

10. On 11 June 1998 the applicant filed an application at OHIM for the registration as a Community trade mark of the word mark 'TRAVATAN' in respect of 'ophthalmic pharmaceutical products'. The goods in respect of which registration was sought are in Class 5 for the purpose of the Nice Agreement concerning the International Classification of Goods and Services for Purposes of the Registration of Marks, of 15 June 1957, as revised and amended ('the Nice Agreement'), namely, 'pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides'.
11. On 22 June 1999, Biofarma SA ('Biofarma') filed a notice of opposition under Article 42 of Regulation No 40/94 against the registration of that Community trade mark. The opposition was based on the existence of the national word mark TRIVASTAN ('the earlier mark'), registered in Italy on 27 January 1986, and on all of the goods covered by that mark, namely 'pharmaceutical, veterinary and hygiene products; dietary products for infants or patients; plasters, materials for dressings; tooth fillings and dental impressions; disinfectants; herbicides and pesticides', included in Class 5. The opposition was directed against all the goods covered in the contested Community trade mark application.
12. Having been called on to furnish proof of the genuine use of the earlier mark in Italy, Biofarma sent some documents to OHIM for that purpose on 28 July 2000.
13. The The opposition brought by Biofarma was accepted by a decision of OHIM's Opposition Division of 26 September 2001, which found that use of the earlier mark was proven in respect of a specific pharmaceutical product, namely a 'peripheral vasodilator intended to treat peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear'. Consequently, that opposition division refused the registration of the word sign 'TRAVATAN' as a Community trade mark on the ground that there was a likelihood of confusion, including the likelihood of association with the earlier mark, in Italy, given the fact that the marks were similar both visually and phonetically and that there was a degree of similarity between the goods concerned.
14. On 13 November 2001, the applicant lodged an appeal against that decision before the Third Board of Appeal of OHIM, which dismissed that appeal in the contested decision and so upheld the Opposition Division's decision, the grounds of which the Third Board of Appeal adopted in substance.

The judgment under appeal

15. By application lodged at the Registry of the Court of First Instance on 17 April 2003, the applicant brought an action for annulment of the contested decision. For that purpose it raised two pleas in law, relating to the infringement of Article 43(2) and (3) and of Article 8(1)(b) and (c), respectively, of Regulation No 40/94.
16. Before addressing those pleas, the Court of First Instance made the preliminary observations in paragraphs 17 to 22 of the judgment under appeal that the plea submitted by the applicant at the hearing in which it relied on Case T-334/01 MFE Marienfelde v OHIMVétoquinol(HIPOVITON) [2004] ECR II-2787 (in order to claim that the conditions required for the earlier mark to be regarded as having been subject to genuine use were not satisfied, in particular because of the small sales volume of the earlier trade mark) should be rejected as inadmissible. After reiterating the terms of the first subparagraph of Article 48(2) of its Rules of Procedure, the Court of First Instance found, first that, in its application, the applicant had alleged that the Board of Appeal had infringed Article 43(2) and (3) of Regulation No 40/94, not in so far as those conditions were not satisfied, but only in so far as the evidence of genuine use submitted by Biofarma did not establish that the earlier mark had actually been used in respect of ophthalmic products and, secondly, that that applicant had entirely failed to establish the existence of new matters of fact or law for the purpose of Article 48.
17. In paragraph 23 of the judgment under appeal, the Court of First Instance added that, 'in any event', even if that plea were to be interpreted as an argument related to the first plea put forward in the application, its review in the context of the examination of the legality of the contested decision could not go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. In paragraph 24 of that judgment the Court of First Instance found that, during the procedure before OHIM, the applicant had not disputed that the evidence supplied by Biofarma showed genuine use of the earlier mark in respect of a particular product. Before the Opposition Division, the applicant had even stated that it had 'noted the documents provided to prove use of the trade mark TRIVASTAN in Italy' and proposed 'not to dispute this issue'. The Court of First Instance therefore held, in paragraph 25 of that judgment, that the applicant's arguments could only be dismissed.
18. The Court of First Instance then rejected, in paragraphs 29 to 33 of the judgment under appeal, the first plea raised by the applicant on the ground that the Board of Appeal had rightly held that the proof furnished by Bioforma showed that the earlier mark had been put to genuine use. In this respect the Court of First Instance stated, in essence, in paragraphs 30 and 31 of that judgment, that if one of the therapeutic indications of a medicinal product bearing the mark TRIVASTAN is to treat vascular disorders of the eye and it has been proved that that product was sold for several years, it is superfluous to require proof that the medicinal product was actually taken by patients suffering from vascular disorders of the eyes.
19. As regards the second plea, the Court of First Instance, after having reiterated the provisions applicable and the case-law about the likelihood of confusion with the earlier mark in paragraphs 45 to 47 of the judgment under appeal, observed, in paragraphs 48 and 49 of that judgment:

'48 In the present case, the earlier mark TRIVASTAN is registered in Italy, which therefore constitutes the relevant territory for the purposes of applying Article 8(1)(b) of Regulation No 40/94.

49 It is common ground that the products in question are medicinal products requiring a doctor's prescription prior to their sale to end users in pharmacies. Consequently, the relevant public is 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.'

20. The Court of First Instance then held in paragraph 50 of the judgment under appeal that in the light of those considerations it was necessary to compare, first, the goods concerned and, second, the conflicting signs.
21. Concerning, in the first place, the comparison of those goods, the Court of First Instance began by dismissing in paragraphs 51 to 53 of the judgment under appeal the restriction which the applicant claimed to have made to the list of goods specified in its trade mark application, stating, in paragraph 53 of the judgment, that the applicant had not submitted any request to amend the application to that effect pursuant to Article 44 of Regulation No 40/94 and to Rule 13 of Regulation No 2868/95.
22. The Court of First Instance held, in paragraph 55 of that judgment, that the goods to be compared were therefore 'ophthalmic pharmaceutical products' and a 'peripheral vasodilator intended for the treatment of peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear'.
23. The Court of First Instance first observed, in paragraph 57 of the judgment under appeal, that those products have the same nature (pharmaceutical products), purpose (treatment of eye disorders whether or not provoked by vascular causes), consumers (professionals, including physicians and pharmacists, and also real end'users, that is patients who suffer from eye disorders) and distribution channels (typically pharmacies) and can be complementary. It inferred that they could undoubtedly be produced or sold by the same economic operators.
24. Next, in paragraph 58 of the judgment under appeal, the Court of First Instance rejected the applicant's argument that the goods were not similar because Biofarma's product is a tablet taken orally, whereas the applicant's product takes the form of eye drops. It stated that that difference in the way in which the medicinal product is administered is of less significance, in the present case, than the fact that the two products have a common nature and purpose.
25. Lastly, in paragraphs 59 and 60 of the judgment under appeal, the Court of First Instance rejected as irrelevant the applicant's argument that its medicinal product is prescribed by a medical eye specialist, whereas Biofarma's medicinal product is prescribed by a medical specialist in the field of vascular disorders.
26. Concerning, in the second place, the comparison of the signs at issue, the Court of First Instance held, first, in paragraph 66 of the judgment under appeal, that the Board of Appeal had not erred in finding that the signs were similar visually. The Court of First Instance observed in that respect, in paragraph 65 of the judgment:

'65 The Board of Appeal rightly found that, visually, the two signs were nearly the same length and shared seven letters, 't', 'r', 'v', 'a', 't', 'a' and 'n', in the same order. It also stated pertinently that the signs began with the same letters 't' and 'r' and had the same ending in 'tan'. It must be observed that the fact that the first two letters do not entirely form the first syllable is not relevant, in the present case, when the signs are compared visually. It must therefore be concluded that the overall impression created by those visual resemblances is that the signs are similar. The Board of Appeal was right to find that the differences between the signs in question, caused by the fact that the third letter of each sign is different (the vowels 'i' and 'a') and the presence of an additional letter in the earlier mark (the consonant 's'), were not capable of overriding that impression, since those elements were not very perceptible visually.'

27. Next, the Court of First Instance concluded, in paragraph 70 of the judgment under appeal, that the Board of Appeal had not erred in finding that there was phonetic similarity between the conflicting signs. The Court of First Instance ruled in this connection, in paragraph 69 of the judgment:

69 '... both signs consist of words having the same phonetic length, the same initial sound ('tr'), the same final sound (the syllable 'tan'), fairly similar middle sounds ('va'/'vas') and the same cadence, as the majority of the phonemes are identical and appear in the same order. It should be noted that the existence of such a large number of common elements prevents Italian consumers from clearly perceiving the small differences between those signs, which is liable to give rise to some confusion on their part'.

28. Lastly, the Court of First Instance held in paragraph 74 of the judgment under appeal that there was no conceptual similarity between the signs in question.
29. In those circumstances, the Court of First Instance held, in paragraphs 75, 76 and 80 of that judgment, that, given the significant similarity of the goods concerned and the visual and phonetic similarity of the signs at issue, there was a likelihood of confusion between those signs in so far as the public might believe that the goods in question originated from the same undertaking or, as the case may be, from economically-linked undertakings. As a result, it dismissed the applicant's second plea and, therefore, the action in its entirety.

Forms of order sought

30. By its appeal, the applicant claims that the Court should:

annul the judgment under appeal;

if necessary, remit the case back to the Court of First Instance, and

order OHIM and/or Biofarma to pay the costs.

31. OHIM contends that the Court should dismiss the appeal and order the applicant to pay the costs.
32. Biofarma, which has not lodged a reply but which made submissions at the hearing, concurs with the arguments submitted by OHIM.

The appeal

33. In support of its claims for annulment of the judgment under appeal, the applicant raises a plea concerning the admissibility of the plea alleging infringement of Article 43(2) and (3) of Regulation No 40/94 and a plea alleging infringement of Article 8(1)(b) of that regulation.

The first plea, concerning the admissibility of the plea alleging infringement of Article 43(2) and (3) of Regulation No 40/94

Arguments of the parties

34. The applicant claims that the Court of First Instance erred in ruling that, on account of being a new plea, the plea alleging infringement of Article 43(2) and (3) of Regulation No 40/94 as regards fulfilment of the conditions required for the earlier mark to be regarded as having been put to genuine use was inadmissible. Having disputed before OHIM the context in which the earlier mark had been used, namely whether that mark had actually been used in Italy to protect ophthalmic products, it submits that it should have been admissible to submit subsidiary claims under that head to the Court of First Instance.
35. In any event, the applicant takes the view that that plea is based on legal issues which came to light in the course of the proceedings, namely the judgment delivered in MFE Marienfelde v OHIM Vétoquinol(HIPOVITON). It submits that in paragraph 35 of that judgment, which was delivered subsequent to the lodging of the action which gave rise to the judgment under appeal, the Court of First Instance, holding that in respect of the extent of the use made of the earlier mark account must be taken, in particular, of the sales volume of all the acts of use on the one hand and, on the other, the duration of the period in which those acts of use occurred and the frequency of those acts, reinterpreted the applicable law as it stemmed from Case C-40/01 Ansul [2003] ECR I-2439.
36. The applicant next claims that the Court of First Instance further erred in law in paragraphs 23 to 25 of the judgment under appeal by holding that even if the plea at issue were admissible, it should restrict itself to reviewing the legality of the Board of Appeal of OHIM's decision on the basis of the factual and legal position as it was before the Board of Appeal. Were this reasoning correct, a contested decision of the Board of Appeal could not be annulled even if it was clearly incorrect in the light of the latest interpretation of the law by the Court of First Instance or the Court of Justice.
37. According to OHIM, the applicant's contention that the mark was not put to genuine use is a new plea since, in the initial plea advanced before the Board of Appeal, the applicant merely claimed that it was not proven that the earlier mark had been used for products with specific therapeutic applications, namely ophthalmic applications, without calling into question the genuine nature of that use. That new contention amends, in breach of Article 135(4) of the Rules of Procedure of the Court of First Instance, the subject-matter of the proceedings as brought before the Board of Appeal, since it seeks a re-examination of the contested decision on issues which that decision did not deal with.

Findings of the Court

38. Inasmuch as, by the first part of the arguments raised under this plea, the applicant alleges that the Court of First Instance misconstrued the scope of the first subparagraph of Article 48(2) of the Rules of Procedure of that Court, it should be recalled that that provision provides that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure.
39. In the present case, paragraphs 17 to 22 of the judgment under appeal show that the Court of First Instance held that, in the absence of any new matters of fact or law, the plea submitted by the applicant at the hearing, according to which the conditions required for the earlier mark to be regarded as having been put to genuine use were not satisfied, in particular because of the low sales volume of that mark, should be rejected as inadmissible in so far as it was a new plea for the purpose of that provision in the Rules of Procedure of the Court of First Instance. In its application, the applicant had alleged that the Board of Appeal had infringed Article 43(2) and (3) of Regulation No 40/94 not in that those conditions were not satisfied, but only in that the evidence of genuine use submitted by Biofarma did not show that the earlier mark had actually been used in respect of ophthalmic products.
40. As the Advocate General observed in point 20 of her Opinion, the assessment made by the Court of First Instance is vitiated by an error in law. The line of argument which states that the conditions required for the earlier mark to be regarded as having been put to genuine use are not satisfied logically falls under the plea alleging that there is no evidence of such genuine use in respect of ophthalmic products. That line of argument, apart from being based on the infringement of the same provision of Regulation No 40/94 as that submitted in the plea in question, seeks, like that plea, to dispute that the earlier mark was actually used in the course of trade. Consequently, it may be regarded as amplifying that plea and must be held to be admissible (Case 306/81 Verros v Parliament [1983] ECR 1755, paragraph 9, and Case C-66/02 Italy v Commission [2005] ECR I-10901, paragraph 86).
41. However, the error in law vitiating paragraphs 17 to 22 of the judgment under appeal is not such as to invalidate that judgment and, therefore, the arguments put forward by the applicant on this issue must be set aside as inoperative. The Court of First Instance's rejection of the line of argument relating to the conditions required for the earlier mark to be regarded as having been put to genuine use has adequate legal basis in other grounds set out in that judgment (see, to that effect, Case C-496/99 P Commission v CAS Succhi di Frutta [2004] ECR I-3801, paragraph 68, and Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 46 to 51).
42. In this connection, it is apparent from paragraphs 23 to 25 of the judgment under appeal, introduced by the phrase 'in any event', which are the subject-matter of the second part of the arguments raised by the applicant under this plea, that the Court of First Instance held that, even if the line of argument relating to the conditions required for the earlier mark to be regarded as having been put to genuine use were to be interpreted as an argument relating to the plea put forward in the application, it should in any case be rejected on another ground to the effect that, since the purpose of the action before the Court of First Instance is to review the legality of the contested decision, in its review it cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. In paragraph 24 of that judgment the Court of First Instance stated, in its definitive assessment of the facts (which is not to be called into question in this appeal) that, in the proceedings before OHIM, the applicant had expressly stated that it did not dispute the fact that the evidence supplied by the intervener showed genuine use of the earlier mark in respect of a particular product.
43. Contrary to the applicant's submission, the Court of First Instance was fully entitled to reject as inadmissible the disputed arguments on this second ground. The applicant does not have the power to alter before the Court of First Instance the terms of the dispute, as delimited in the respective claims and allegations it and the party opposing the trade mark application have submitted (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 26, and KWS Saat v OHIM, paragraph 58).
44. First, under Article 63 of Regulation No 40/94, a Board of Appeal's decision may be annulled or altered only on grounds of lack of competence, infringement of an essential procedural requirement, failure to comply with the EC Treaty, with Regulation No 40/94 or with any rule of law relating to their application, or misuse of power. Accordingly, the review of that decision by the Community Courts is confined to a review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within OHIM, requiring new factual submissions made to that body to be taken into consideration (see, to that effect, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 50, and Case C-29/05 P OHIM v Kaul [2007] ECR I-0000, paragraph 54).
45. Secondly, it follows from Article 135(4) of the Rules of Procedure of the Court of First Instance that the parties to proceedings before that Court may not change the subject-matter of the proceedings before the Board of Appeal.
46. As a result, having independently reached the finding that the applicant had abstained from challenging before OHIM the fact that the earlier mark satisfied the conditions required in order to be regarded as having been put to genuine use, the Court of First Instance was entitled, without erring in law, to find that the disputed arguments at issue, expounded for the first time in the hearing before it, were inadmissible.
47. It follows that the first plea must be rejected as in part inoperative and in part unfounded.

The second plea, concerning infringement of Article 8(1)(b) of Regulation No 40/94

The first part, relating to the definition of the relevant public

Arguments of the parties

48. By the first part of the second plea, the applicant claims that the Court of First Instance erred in law in paragraph 49 of the judgment under appeal in its interpretation of the term 'public', in so far as it failed to state that end-users do not make a choice when they buy goods issued on a doctor's prescription. That situation implies that, at the time of sale to the end-user, the trade mark affixed to the goods does not carry out the function of guaranteeing the identity of those goods by allowing the user to distinguish those goods from goods from another origin. Consequently, there is no likelihood of confusion for the end-user. That approach has been followed both by the Boards of Appeal and by the Community Courts (Case T-237/01 Alcon v OHIM Dr. Robert Winzer Pharma (BSS) [2003] ECR II-411, paragraph 42, confirmed on that issue by the Court of Justice in the order in Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 30).
49. It follows, in the submission of the applicant, that the Court of First Instance should have restricted the definition of the public solely to healthcare professionals, that is, doctors and pharmacists, and that end-users should not have been taken into account for the purpose of assessing the likelihood of confusion.
50. OHIM contends that the likelihood of confusion is not limited to cases of direct confusion, in which goods bearing a certain trade mark are confused with different goods bearing a competitor's trade mark. Since the essential function of a Community trade mark is to serve to indicate the origin of the goods, it is enough for the relevant public to attribute the same origin to two sets of goods bearing identical or similar marks. Patients might attribute the same origin to the goods in question even if their choice is guided in the purchasing transaction and even if the contact with the two marks at issue occurs at different times during separate purchasing transactions. The decisions to the contrary adopted by the Boards of Appeal are not binding on the Community Courts. As for the judgments cited by the applicant, they concern other provisions of Regulation No 40/94, namely Article 7(1)(d) and Article 50(1)(a).

Findings of the Court

51. Under Article 8(1)(b) of Regulation No 40/94, the existence of a likelihood of confusion resulting from the similarity, on one hand, between the trade mark in the application for registration and an earlier trade mark and, on the other hand, between the goods or services covered by the trade marks, must be assessed on the part of the public in the territory in which the earlier trade mark is protected.
52. In the present case, after having stated in paragraph 48 of the judgment under appeal that since the earlier mark was registered in Italy, that Member State therefore constituted the relevant territory for the purposes of applying that provision of Article 8, the Court of First Instance found, in paragraph 49 of that judgment, that, since it is common ground that the products in question are medicinal products requiring a doctor's prescription prior to their sale to end-users in pharmacies, the relevant public is 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.
53. According to case-law, the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, in particular, Case C-299/99 Philips [2002] ECR I-5475, paragraph 30, and Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 27).
54. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28).
55. Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see, to that effect, Canon, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17).
56. In the present case, having regard to that case-law, the Court of First Instance was fully entitled to hold, which indeed is not disputed by any party in these appeal proceedings, that the healthcare professional at issue must be included in the relevant public for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, the function of the trade mark as an indication of origin being also relevant to intermediaries who deal with the goods commercially in so far as it will tend to influence their conduct in the market (see, to that effect, Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, paragraphs 23 and 25).
57. However, contrary to what the applicant claims, the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue.
58. In so far as it found in paragraph 49 of the judgment under appeal, in its definitive assessment of the facts, that the products at issue are sold in pharmacies to the end-users, the Court of First Instance was fully entitled to infer therefrom that, even though the choice of those products is influenced or determined by intermediaries, such a likelihood of confusion also exists for those consumers since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times.
59. It is settled case-law that the perception of the marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (Lloyd Schuhfabrik Meyer, paragraph 25, and Case C-361/04 P Ruiz-Picassoand Others v OHIM [2006] ECR I-643, paragraph 38).
60. In addition, the Court of Justice has already held that the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind (Lloyd Schuhfabrik Meyer, paragraph 26, and judgment of 23 September 2004 in Case C-107/03 P Procter & Gamble v OHIM, not published in the ECR, paragraph 44).
61. Furthermore, since it is undisputed that the whole process of marketing the goods at issue is aimed at the end-user's acquisition of them, the Court of First Instance was entitled to hold that the role played by intermediaries, even if they are healthcare professionals whose prior intervention is required in order to sell those goods to end-users, must be in part balanced against the high degree of attentiveness which may be shown by those users, in the light of the fact that the goods at issue are pharmaceutical products, when they are prescribed and, consequently, against those users' ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences.
62. In this connection, it should be recalled that the Court has already ruled that where the goods or services with which the registration application is concerned are intended for all consumers, the relevant public must be deemed to be composed of the average consumer, reasonably well'informed and reasonably observant and circumspect (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 33, and Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 24).
63. It follows that the Court of First Instance did not err in law by including end-users in the relevant public for the purposes of applying Article 8(1)(b) of Regulation No 40/94.
64. That conclusion cannot be called into question by arguments which the applicant has derived from certain decisions of the Boards of Appeal or the Community Courts.
65. The decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are led to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the Community judicature and not on the basis of a previous decision-making practice (BioID v OHIM, paragraph 47, and Case C-173/04 P Deutsche SiSi'Werke v OHIM [2006] ECR I-551, paragraph 48).
66. As regards the case which gave rise to the judgment of the Court of First Instance in Alcon v OHIM Dr. Robert Winzer Pharma (BSS), cited by the applicant in support of its arguments, that case concerned a trade mark application which related not to goods sold to end-users in pharmacies, but to 'ophthalmic pharmaceutical preparations; sterile solutions for ophthalmic surgery' in respect of which the Court of First Instance was entitled to hold without erring in law that the customary nature of the trade mark at issue should be assessed from the point of view of the medical specialists for whom it was intended, namely ophthalmologists and ophthalmic surgeons practising in the European Union.
67. Therefore, the first part of the second plea must be rejected as unfounded.

The second part, relating to the similarity of the goods

Arguments of the parties

68. The applicant claims that the Court of First Instance erred in law by not requiring Biofarma to adduce evidence of the alleged similarity between the goods at issue. It submits that the Court of First Instance also failed to take into account or at least failed to give enough consideration to the relevant aspects of those goods, in particular the nature and form of the goods and the role of the healthcare professionals who prescribe and issue those goods.
69. OHIM makes the observation that the concept of similarity of goods is a legal issue which must be examined automatically by its own authorities. As regards the need to have regard to the form of the goods, OHIM considers that that information is irrelevant unless the designation of the goods in the trade mark application specifies that form of use, which is not true in this case. The form, it submits, is merely an aspect of marketing which is extraneous to the trade mark sought and which may change over time. The same finding applies to the fact that the goods are sold on prescription, since this fact also is an aspect which is extraneous to the goods on the list to which the Community trade mark application at issue refers.

Findings of the Court

70. The Court rejects from the outset as inadmissible the argument by which the applicant, referring to the level of evidence which should have been required from Biofarma, effectively seeks to call into question the purely factual assessment made by the Court of First Instance in paragraphs 57 to 60 of the judgment under appeal, which led that Court to rule in paragraph 61 of that judgment that the Board of Appeal did not err in finding that there was a high degree of similarity between the goods in question.
71. The applicant cannot require the Court to substitute its own assessment for that of the Court of First Instance in that regard. It is settled case-law that the effect of Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice is that an appeal lies on points of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 41, and Rossi v OHIM, paragraph 26).
72. As regards the argument according to which the Court of First Instance failed to take into account criteria which were relevant in assessing whether the goods at issue are similar, case-law shows that in the assessment of that similarity all the relevant factors characterising the relationship between those goods should be taken into account. Those factors include, in particular, their nature, their end-users, their method of use and whether they are in competition with each other or are complementary (see, to that effect, Canon, paragraph 23).
73. In the present case it must be held that, pursuant to that case-law, the Court of First Instance, in order to conclude in paragraph 61 of the judgment under appeal that the Board of Appeal did not err in finding that there was a high degree of similarity between the products in question, correctly examined, in paragraph 57 of the judgment under appeal, the nature of those products, their purpose, their end-users, the way in which they are sold and whether they are in competition with each other or are complementary. The applicant is therefore incorrect in criticising the Court of First Instance for failing to take into account relevant criteria in the assessment of the similarity of the products.
74. Furthermore, in so far as the applicant alleges the Court of First Instance failed correctly to take into account the criterion relating to the form of the products at issue, it should be stated that the Court of First Instance, in paragraph 58 of the judgment under appeal, did examine the application of that criterion for the purposes of assessing the similarity of the goods. It considered however, that the difference in the way in which the medicinal products at issue are administered is of less significance, in the present case, than the fact that the two products have a common nature and the same end-users.
75. By criticising the Court of First Instance for failing correctly to take into account the form of the products at issue, the applicant is thereby effectively attempting to have the Court of Justice substitute its own assessment of the facts for that of the Court of First Instance in that latter regard. Accordingly, since the applicant has not alleged any distortion of the facts or evidence submitted to the Court of First Instance, the argument raised to that effect must, in accordance with the case-law cited in paragraph 71 of this judgment, be rejected as inadmissible.
76. Lastly, in so far as the applicant alleges that the Court of First Instance failed to take into account the fact that the goods at issue are issued by healthcare professionals solely on prescription, that argument must be rejected as unfounded on the same grounds as those set out in paragraphs 51 to 63 of this judgment, since it effectively challenges the definition of the relevant public accepted in the judgment under appeal.
77. Consequently, the second part of this plea must be rejected as in part inadmissible and in part unfounded.

The third part, relating to the similarity of the signs

Arguments of the parties

78. The applicant alleges that the Court of First Instance erred in law by comparing the signs at issue without correctly identifying the relevant public in respect of which the likelihood of confusion should be examined.
79. Concerning visual similarity, the applicant claims that the Court of First Instance erred in holding that the general impression created by the visual similarities proved that the marks at issue were similar. In the context of an overall assessment, even though there are similarities, there are not enough of them to conclude that those marks are visually similar. The visual comparison should be carried out through the eyes of a member of the relevant public.
80. Concerning phonetic similarity, the applicant claims that the Court of First Instance incorrectly held that the marks at issue were similar from that standpoint. In fact, the dominant prefixes of each mark are clearly distinguishable and are pronounced quite differently. In addition, it submits that the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks is irrelevant in the present case, since the goods at issue are prescribed by specialist doctors. In any event, the effect of any similarities should not be overstated, particularly if the difference in the form of the two products and the specific healthcare context in which each of them is sold is taken into account.
81. OHIM contends that those various arguments are inadmissible since the applicant restricts itself to criticising the findings of fact made by the Court of First Instance.

Findings of the Court

82. The argument according to which the Court of First Instance erred in law by comparing the signs at issue without correctly identifying the relevant public must be rejected from the outset as unfounded on the same grounds as those set out in paragraphs 51 to 63 of this judgment, since that argument effectively challenges the definition of the relevant public accepted in the judgment under appeal.
83. In so far as the applicant submits that the signs at issue are not likely to be confused on the visual and phonetic levels, in particular having regard to the form of the goods at issue and the specific healthcare context in which those goods are sold, it should be observed that the Court of First Instance, in paragraphs 64 to 70 of the judgment under appeal, carried out a purely factual appraisal in this connection to conclude, in paragraphs 75 and 76 of that judgment, that the signs at issue were visually and phonetically similar.
84. As a result, pursuant to the case-law cited in paragraph 71 of this judgment, since there is no allegation that the Court of First Instance distorted the facts or evidence submitted to it, the third part of the second plea must, in that regard, be rejected as inadmissible.
85. Furthermore, the arguments used by the applicant to criticise the Court of First Instance for failing to take into account, in its assessment of whether the signs at issue are visually or phonetically similar, the fact that the relevant public includes healthcare professionals in addition to end-users, are indissociable from the fourth part of this plea. They will therefore be considered within that context.

The fourth part, relating to the likelihood of confusion

Arguments of the parties

86. The applicant submits that, although Court of First Instance observed that the relevant public includes, in addition to end-users, pharmacists and doctors, it did not actually take that into account and it assessed whether there was a likelihood of confusion only on the basis of what is perceived by the average consumer. As it is, in its decision the Opposition Division had considered that the likelihood of confusion between the goods at issue by doctors and pharmacists was weak.
87. OHIM contends that the arguments submitted in that regard are inadmissible in so far as they are not legal arguments in which the applicant is claiming that the Court of First Instance misinterpreted Article 8(1)(b) Regulation No 40/94 or distorted the facts.

Findings of the Court

88. By this part of the second plea, the applicant is seeking to establish that the Court of First Instance erred in law in so far as it failed to examine the likelihood of confusion of the signs at issue, within the meaning of Article 8(1)(b) of Regulation No 40/94, in the eyes of the relevant public as accepted in the judgment under appeal.
89. Contrary to what is submitted by OHIM, by thereby casting doubt on the reasoning followed by the Court of First Instance in its application of that provision the applicant is thus raising a legal issue concerning the Court of First Instance's application of Community law. Accordingly, this part of the second plea is admissible.
90. As regards the merits of that part, it should be recalled that in paragraph 48 of the judgment under appeal the Court of First Instance found that Italy constitutes the relevant territory in the present case. Furthermore, it follows from paragraphs 51 to 63 of this judgment that the Court of First Instance was entitled to hold, in paragraph 49 of the judgment under appeal, that the relevant public is composed not only of end-users, but also of certain healthcare professionals. Therefore, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the existence of a likelihood of confusion between the goods at issue must be assessed, as the Court of First Instance held in paragraph 50 of the judgment under appeal, in relation to the perception of them in the eyes of the relevant public, as thus defined.
91. Consequently, the Court of First Instance was entitled, in paragraphs 62 to 76 of the judgment under appeal, to assess whether there was a likelihood of confusion in the eyes of end-users.
92. By contrast, it is not apparent to the requisite legal standard from the judgment under appeal whether the Court of First Instance systematically assessed whether there was such a likelihood of confusion in the eyes of the healthcare professionals at issue.
93. In paragraph 65 of the judgment under appeal, the Court of First Instance made a general assessment of the visual similarity between the signs at issue, without making clear the extent to which that assessment applied to end consumers and to healthcare professionals, if necessary by distinguishing or qualifying the analysis according to the part of the relevant public concerned.
94. Similarly, as regards the phonetic similarity between the signs at issue, whereas the Court of First Instance based its assessment in this respect, in paragraph 69 of the judgment under appeal, on the perception of them by 'Italian consumers', it did not state in that paragraph to what extent that assessment applies to both end-users and healthcare professionals. Admittedly, in paragraph 57 of that judgment, concerning the assessment of the similarity of the goods at issue, the Court of First Instance expressly refers to both end-users and healthcare professionals by the term 'consumers'. However, that term, used in another part of the same judgment merely to define the relevant nationality, is, in the absence of any other indication, more likely to refer to the former group than the latter, a fortiori since it is apparent from the file before the Court of Justice that the contested decision under judicial review in the judgment under appeal included solely end-users in the relevant public.
95. The issue of the perception of the signs at issue in the eyes of healthcare professionals was at the centre of the arguments on the scope of Article 8(1)(b) of Regulation No 40/94, developed by the applicant before the Court of First Instance, as it is before the Court of Justice at the appeal stage.
96. In those circumstances, this Court finds that the judgment under appeal is vitiated by a flaw in the reasoning on those issues, the Court not having sufficient information to be able to exercise its power of review in that regard.
97. Pursuant to case-law, the issue whether the grounds of a judgment of the Court of First Instance are contradictory or inadequate is a question of law which is amenable, as such, to judicial review on appeal (Case C-401/96 P Somaco v Commission [1998] ECR I-2587, paragraph 53, and Case C-446/00 P Cubero Vermurie v Commission [2001] ECR I-10315, paragraph 20).
98. Therefore, it must be stated that the Court of First Instance has, in paragraphs 65 and 69 of the judgment under appeal, given inadequate reasons for its assessment concerning whether the signs at issue are visually or phonetically similar in the eyes of the relevant public, which also includes certain healthcare professionals.
99. However, that failure to give adequate reasons is not such as to invalidate the judgment under appeal. Since, in the context of its definitive assessment of the facts in paragraphs 56 to 57 of the judgment under appeal, the Court of First Instance concluded that there was significant similarity between the goods concerned as well as visual and phonetic similarity of the signs at issue in the eyes of that part of the relevant public which consisted of end-users, it was entitled, without infringing the scope of Article 8(1)(b) of Regulation No 40/94, to deduce, in paragraphs 76 and 80 of that judgment, that there was a likelihood of confusion between those signs within the meaning of that provision.
100. In the light of those considerations, in spite of the failure to give adequate reasons which vitiates paragraphs 65 and 69 of the judgment under appeal, there is no cause for annulment of that judgment since, in any event, the grounds given are sufficient to provide a basis for the operative part, namely the Court of First Instance's dismissal of the appeal directed against the contested decision (see, to that effect, Commission v CAS Succhi di Frutta, paragraph 68, and KWS Saat v OHIM, paragraphs 46 to 51).
101. Consequently, the fourth part of the second plea must be rejected as inoperative.

The fifth part, concerning the limited nature of the Community trade mark application

Arguments of the parties

102. According to the applicant, the Court of First Instance erred by considering that the Board of Appeal of OHIM could not be criticised for failing to hold that the applicant's statement in its pleading before that Board, in which it confirmed that it was willing to limit the specification of goods in the application to ophthalmic pharmaceuticals for the treatment of glaucoma, constituted an express proposal for amendment in the event of the Board being minded to uphold the opposition. In the absence of oral proceedings, the applicant had no opportunity to ascertain that board's likely view before the decision was adopted. The proposed amendment of the list of goods would have enabled the difference between the applicant's goods and those of Biofarma to be clarified further.
103. OHIM takes the view that the assessments made by the Board of Appeal cannot be challenged at this stage of the proceedings. In addition, it contends, the applicant is not putting forward any reason based on law or on distortion of the facts which would enable the conclusion of the Court of First Instance in paragraph 53 of the judgment under appeal, that the detailed rules for restricting the specification of goods had not been satisfied, to be overturned. The issue whether the restriction suggested by the applicant complied with Article 44 of Regulation No 40/94 and Rule 13 of Regulation No 2868/95 is a matter of fact which does not fall within the jurisdiction of the Court of Justice. OHIM maintains that the second plea is therefore inadmissible in that respect.

Findings of the Court

104. So far as the admissibility of this part of the second plea is concerned, it should be noted that, by this part, the applicant is not claiming, in contrast to what OHIM submits, that the statement in its pleading before the Board of Appeal complied with the detailed rules laid down in Regulations No 40/94 and No 2868/95, but it criticises the Court of First Instance for failing to take that statement into account in spite of the fact that it did not comply with those detailed rules.
105. In doing so, the applicant is alleging that the Court of First Instance misinterpreted Community law and is therefore raising a point of law. Accordingly, this part of the second plea is admissible.
106. As regards the merits of this part, it should be recalled that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the assessment of the likelihood of confusion between the goods must concern all of the goods designated in the application for registration of a Community trade mark.
107. Under Article 44(1) of that regulation, the applicant may at any time restrict the list of goods or services contained in the application. A request to amend an application submitted under that provision must comply with the detailed rules established by Rule 13 of Regulation No 2868/95.
108. By this part of the second plea, the applicant is not disputing that it failed to lodge such a request. It maintains however that, in the absence of any oral proceedings before the Board of Appeal, an express proposal for restriction of the specification of goods, such as that set out in this instance in its pleading before that board, should have been taken into account where the Board intended to uphold the opposition.
109. However, no such obligation is laid down either in Regulation No 40/94 or in Regulation No 2868/95. As paragraph 107 of this judgment shows, any request for restriction of the specification of goods must be submitted, pursuant to those regulations, in the form of a request for amendment which complies with certain detailed rules. As the Court of First Instance rightly held in paragraph 51 of the judgment under appeal, such a request must be made expressly and unconditionally.
110. Consequently, since it is undisputed in this case that the proposal set out by the applicant in its pleading before the Board of Appeal did not comply with those requirements, the Court of First Instance was entitled to hold, in paragraphs 53 and 54 of the judgment under appeal, that the Board of Appeal cannot be criticised for failing to take that proposal into account.
111. As a result, the fifth part of the second plea must be rejected as unfounded.
112. Since the applicant has been unsuccessful in all of its pleas, the appeal must be dismissed.

Costs

113. Under Article 69(2) of the Rules of Procedure, which applies on an appeal by virtue of Article 118 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. Since OHIM has applied for costs and the applicant has been unsuccessful, it must be ordered to pay OHIM's costs. Since Biofarma has not applied for costs, it must be ordered to bear its own costs.

On those grounds, the Court (Third Chamber) hereby:

1. Dismisses the appeal;

2. Orders Alcon Inc. to pay, in addition to its own costs, the costs of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);

3. Orders Biofarma SA to bear its own costs.

[Signatures]

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* Language of the case: English.